Appeal No. 2005-0642
Application No. 09/568,278
The Examiner’s accurate factual analysis demonstrates that the examiner has made
out a prima facie case of recapture. The Examiner has shown in what aspect the
reissue claims are broader than the patent claims, and has shown that the broader
aspects of the reissued claim relate to surrendered subject matter. Pannu v. Storz
Instruments, Inc., 258 F.3d 1366, 1371, 59 USPQ2d 1597, 1600 (Fed. Cir. 2001).
C. Appellant’s response to the Examiner’s case
(1)
Introduction
Having found a prima facie showing by the Examiner, we must now
determine whether that showing has been rebutted by Appellants.
“Deliberately canceling or amending a claim in an effort to overcome
a reference strongly suggests that the applicant admits that the scope
of the claim before the cancellation or amendment is unpatentable, but
it is not dispositive because other evidence in the prosecution history
may indicate the contrary.” In re Clement, 131 F.3d at 1469, 45
USPQ2d at 1165 (Fed. Cir. 1997).
In determining whether Appellants have rebutted the Examiner’s prima facie
showing, we must determine whether Appellants have shown the reissued claim
was materially narrowed in other respects to avoid the recapture rule. Pannu,
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