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 - 50 -Page: Previous 43 44 45 46 47 48 49 50 51 52 53 54 55 56 57 NextLast modified: November 3, 2007