Appeal No. 2004-0659
Application No. 09/111,978
(8)
ALLOCATION OF BURDEN OF PROOF
What is the proper allocation of the burden of proof in ex parte examination?
For reasons that follow, we hold that an examiner has the burden of making out a
prima facie case of recapture. The examiner can make out a prima facie case of
recapture by establishing that the claims sought to be reissued fall within Substeps (1) or
3(a) of Clement.
For reasons that follow, we also hold that once a prima facie case of recapture is
established, the burden of persuasion then shifts to the applicant to establish that the
prosecution history of the application, which matured into the patent sought to be
reissued, establishes that a surrender of subject matter did not occur.
As will become apparent, our rationale parallels practice in determining whether
subject matter is surrendered when a doctrine of equivalents analysis occurs in
infringement cases.
(9)
BURDEN OF PROOF ANALYSIS
Our analysis begins with an observation made by our appellate reviewing court in
Hester, 142 F.3d at 1481-82, 46 USPQ2d at 1649:
[A]s recognized in Ball, the recapture rule is based on principles of
equity[5] and therefore embodies the notion of estoppel. 729 F.2d at 1439,
221 USPQ at 296. Indeed, the recapture rule is quite similar to
prosecution history estoppel, which prevents the application of the
doctrine of equivalents in a manner contrary to the patent’s prosecution
history. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., [520 U.S.
17, 33] 117 S. Ct. 1040, 1051[41 USPQ2d 1865, 1873] (1997). Like the
recapture rule, prosecution history estoppel prevents a patentee from
regaining subject matter surrendered during prosecution in support of
patentability. See id.
5 The reissue statute has been characterized as being remedial in nature, based on
fundamental principles of equity and fairness and should be construed liberally. In re
Bennett, 766 F.2d 524, 528, 226 USPQ 413, 416 (Fed. Cir. 1985) (in banc); In re
Willingham, 282 F.2d 353, 354-55, 127 USPQ 211, 214 (CCPA 1960). Nevertheless,
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