Appeal No. 2004-0659
Application No. 09/111,978
depending on the circumstances, e.g., prior art applied and amendments to claims. It is
from a fixed perspective that the public (not the patentee) must make an analysis of what
the patentee surrendered during prosecution. Moreover, an applicant (not the public)
controls what arguments and amendments are presented during prosecution. When an
argument or amendment is presented, it is the applicant that should be in the best position
to analyze what subject matter (i.e., territory to use the Supreme Court’s language) is
being surrendered.
2. THE EXAMINER’S PRIMA FACIE CASE
Our finding of fact 45 sets out the basis upon which the examiner made a
recapture rejection. As noted in Finding 47, the record supports the Examiner’s findings.
In the application which matured into the patent now sought to be reissued, the
examiner “rejected” originally filed claims 1-27, as noted in findings of fact 20-26.
Applicant proceeded to amend independent application claims 1 and 14. Claims 1-27
issued as renumbered patent claims 1-27 (Finding 33).
The method and system of the original claims rejected by the examiner based on
prior art did not contain certain limitations:
Limitation A: moving . . . “at a substantially constant
velocity” --found in patent claims 1 and 14, but not original
application claims 1 and 14.
Limitation B: separate detector elements “which are
substantially uniformly spaced” --found in patent claims 1
and 14, but not original application claims 1 and 14.
Limitation C: the detectors in “a substantially” fixed
relation to each other --found in patent claims 1 and 14, but
not original application claims 1 and 14.
Because limitations A, B, and C are absent from the reissue claims being rejected and
since those limitations are germane as to why the prior art did not reach claims containing
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