Appeal No. 2004-0659
Application No. 09/111,978
GARRIS, Administrative Patent Judge, concurring.
I agree with the majority’s decision to affirm the rejection of claims 30 through 85
under 35 U.S.C. § 251 based on recapture. Particularly in light of the correspondence
between the recapture pertinent facts in this appeal and those in Pannu v. Storz
Instruments, Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001), this affirmance is
appropriate as fully explained in the majority opinion.
I write separately to express my disagreement with certain statements made by the
majority which are unnecessary for resolution of this appeal and which are contrary to
binding decisional and statutory authority.
On page 27 of this decision, the majority states “the proper interpretation of the
applicable and binding case law is that surrendered subject matter includes any claim that
lacks a limitation directed to the specific subject matter that was added to overcome a
prior art rejection.” This definition of surrendered subject matter is proper under
appropriate factual circumstances such as those of the instant appeal. See Pannu, id.
However, when read in context, this statement clearly reflects the majority’s position that
it is not proper under any circumstances to define surrendered subject matter vis-à-vis the
recapture rule in terms of a claim which has been canceled or amended in order to avoid a
rejection.
This position is erroneous.
The binding precedent of our present and past reviewing courts includes
numerous decisions which define surrendered subject matter in terms of a claim that had
been canceled or amended to avoid a rejection. For example: See In re Clement, 131
F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d
1429, 221 USPQ 289 (Fed. Cir. 1984); In re Richman, 409 F.2d 269, 161 USPQ 359
(CCPA 1969); In re Byers, 230 F.2d 451, 109 USPQ 53 (CCPA 1956); In re Wadsworth,
107 F.2d 596, 43 USPQ 460 (CCPA 1939). The majority has contradicted this binding
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