Appeal No. 2004-0659
Application No. 09/111,978
limitations A, B, and C, the examiner has correctly placed the claims sought to be
reissued within Substep (3)(a) of Step (3) of Clement.
As the examiner accurately notes, with respect to reissue application claims 30
through 85:
There is no question that the new [re-issue] claims are
broader than the patent claims due to the elimination of 1)
the relative movement being “at a substantially constant
velocity” and 2) the detector elements being “substantially
uniformly spaced” limitations, that are present in the
[patent] claims. [Examiner’s Answer, page 5]
The Examiner’s accurate factual analysis demonstrates that the examiner has
made out a prima facie case of recapture.
3. APPLICANT’S RESPONSE TO THE EXAMINER’S CASE
(1) ARGUMENTS OF APPEAL BRIEF FILED MARCH 17, 2003
In the Appeal Brief filed March 17, 2003, Appellant cites numerous authorities
for the proposition that he is not precluded from broadening a limitation added to a claim
in obtaining its allowance. We agree that Appellant is not precluded, so long as
Appellant shows that at the time the amendment was made, one skilled in the art could
not reasonably have viewed the subject matter broader than any narrowing amendment as
having been surrendered. As we have already fully discussed supra, Appellant is free to
rebut the presumption of surrender based on evidence generally limited to (1) the
prosecution history of the application which matured into the patent sought to be reissued
and (2) showings related to what was known by a person having ordinary skill in the art
at the time an amendment was made. Appellant has not favored us with such rebuttal
argument and evidence in the record before us.
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