Ex Parte BIEMAN - Page 50




                  Appeal No. 2004-0659                                                                                           
                  Application No. 09/111,978                                                                                     

                          Appellant also argues at page 10 of the brief, “[t]he subject matter surrendered                       
                  during prosecution of the parent application is that of the original claims.”   We disagree                    
                  with such a per se rule.                                                                                       
                          An argument that only the subject matter of a rejected claim can be viewed, as                         
                  surrendered territory appears to be inconsistent with sound public policy made apparent                        
                  by binding Supreme Court and Federal Circuit precedent.  Rather than applying a per se                         
                  rule, we believe that the proper inquiry requires a factual analysis on a case-by-case basis                   
                  to determine whether the patentee is attempting to recapture by reissue subject matter                         
                  surrendered during the prosecution of the patent application.                                                  
                          We note that at the oral hearing on June 27, 2006, appellant argued:                                   
                          1)  limitation A is in the prior art and thus could not reasonably be viewed as                        
                                  surrendered;                                                                                   
                          2)  limitation B is in the prior art and thus could not reasonably be viewed as                        
                                  surrendered;  and                                                                              
                          3)  limitation C is actually a broadening of the claim rather than a narrowing and                     
                                  thus could not reasonably be viewed as surrendered.                                            
                  However, while we view this type of argument as directly on point to the issue before us,                      
                  Appellant provided no evidence in support of the oral arguments, nor do such arguments                         
                  and supporting evidence appear in the briefs.  This last point is critical as                                  
                  37 C.F.R. § 41.47(e)(1) requires “at the oral hearing, appellant may only rely on evidence                     
                  that has been previously entered and considered by the primary examiner and present                            
                  argument that has been relied upon in the brief or reply brief except as permitted by                          
                  paragraph (e)(2) of this section.”                                                                             

                                  (2)  ARGUMENTS OF REPLY BRIEF FILED OCTOBER 8, 2003                                            
                          Appellant, at page 4 of the Reply Brief filed October 8, 2003, argues:                                 
                                  The aspect of the present claim that is unrelated to the                                       
                                  rejection are the limitations insisted to by the Examiner “at                                  
                                  a substantially constant velocity” and “which are                                              
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