Appeal No. 2005-0642
Application No. 09/568,278
What evidence may an applicant rely on to rebut any prima facie case of
recapture?
We hold that the admissible rebuttal evidence generally should be 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. Nevertheless, we
cannot attempt to divine, at this time, all evidence that might be relevant. As with
other issues that come before the USPTO, such as obviousness and enablement, the
evidence to be presented will vary on a case-by-case basis, as will the analysis of
that evidence.
“It is clear that in determining whether ‘surrender’ of subject matter has
occurred, the proper inquiry is whether an objective observer viewing the
prosecution history would conclude that the purpose of the patentee's amendment
or argument was to overcome prior art and secure the patent.” Kim v. Conagra
Foods, Inc., 465 F.3d 1312, 1323, 80 USPQ2d 1495, 1502 (Fed. Cir. 2006). Thus,
we also hold that an applicant must show that at the time the amendment was
made, an “objective observer” could not reasonably have viewed the subject matter
broader than any narrowing amendment as having been surrendered. The showing
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