Appeal No. 2005-0642
Application No. 09/568,278
GARRIS, Administrative Patent Judge, dissenting.
I write separately to dissent from the majority's decision affirming the
Examiner's rejection of claims 26-46 under 35 U.S.C. § 251 based on recapture.
As an initial matter, it is important to recognize that the majority's
affirmance is based upon an incorrect legal proposition. It is, in essence, the
majority's proposition that it is no longer proper under any circumstances to define
surrendered subject matter relating to the recapture rule in terms of a claim which
has been canceled or amended in order to avoid a rejection. Instead, it is the
majority's belief that surrendered subject matter must now be defined under all
circumstances as including any claim which lacks a limitation added or argued by
an applicant in order to avoid a rejection. As defined by the majority, surrendered
subject matter is "the subject matter of an application claim which was amended or
canceled and, on a limitation-by-limitation basis, the territory falling between the
scope of (a) the application claim which was canceled or amended and (b) the
patent claim which was ultimately issued" (Opinion, page 29).
This proposition is erroneous.
Our binding precedent includes numerous decisions which define
surrendered subject matter in terms of a claim which had been canceled or
amended to avoid a rejection. 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 (Fed. Cir. 1969); In re
Byers, 230 F.2d 451, 109 USPQ 53 (CCPA 1956); In re Wadsworth, 27 CCPA
735, 107 F.2d 596, 43 USPQ 460 (1939). The majority has contradicted this
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