Appeal No. 2005-0642
Application No. 09/568,278
Appellants' claim 26 is both broader (as shown by the Examiner) and
narrower (as argued by Appellants) than the cancelled or patented claims.
However, merely demonstrating as Appellants have done that a claim is narrower
as to some aspect, is not a showing that the claim is “materially narrowed” or
“narrower in an aspect germane to a prior art rejection” as is required by Clement
and Pannu. Without more, the arguments of Appellants’ Brief fail to rebut the
Examiner’s prima facie case of recapture.
(3)
Arguments of Supplemental Appeal Brief filed March 29, 2002
On remand to consider the impact of the Pannu decision, Appellants argue at
page 3 of the Supplemental Brief:
Pannu supports Appellants’ position that, because claims in the
reissue application were narrowed in a material respect compared with
their broadening, the reissue avoids the recapture rule. Significantly
unlike the situation in Pannu, the added limitations in this case
involve the same subject matter as and are material to the removed
limitations.
Appellants go on at page 4 to argue that they have shown there is no recapture
because:
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