Appeal No. 2005-0642
Application No. 09/568,278
analyze what subject matter (i.e., territory to use the Supreme Court’s language) is
being surrendered.
B. The Examiner’s prima facie case
Our findings of fact 75-76 set out the basis upon which the examiner made a
recapture rejection. As noted in Finding 77, the record supports the Examiner’s
findings.
Basically, in the application which matured into the patent now sought to be
reissued, the examiner “objected to” originally filed dependent claim 7 (dependent
on claim 4). Why? Because, it depended from claims that were rejected over the
prior art. The examiner indicated in the first Office action, however, that
application claim 7 (and claims 8 and 9 depending therefrom) would be allowable
if re-written in independent form.
Applicant proceeded to re-write application claim 4 by (1) canceling claim 7
and (2) adding limitations of claim 7 to claim 4. Amended application claim 4
issued as patent claim 4.
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