Appeal 2005-0801
Application 09/848,628
The second step is to determine whether the broader aspects of the
reissue claims relate to surrendered subject matter. Thus, one looks to the
prosecution history for arguments and changes to the claims made in an
effort to overcome a prior art rejection to determine what surrendered
subject matter exists, if any. If no surrendered subject matter exists, then the
"recapture rule" does not apply. If surrendered subject matter exists, it must
then be determined whether the surrendered subject matter has crept into the
reissue claims.
As stated, supra, binding precedent has defined surrendered subject
matter in terms of a claim that had been canceled or amended to avoid a
rejection. In the instant case, we determine that the surrendered subject
matter is represented by original patent application claims 1, 2, and 4. We
rely upon the following prosecution history of Application No. 08/887,238
in support thereof.
In the First Office Action, dated January 26, 1998, the Examiner
rejected originally filed claims 1-5, and 7-20, and indicated that the subject
matter of claim 6 was allowable (claim 6 recited the limitation regarding a
reinforcing groove in the hood portion). Claim 6 depended upon claim 4,
and claim 4 depended upon claim 2, which depended upon claim 1.
Appellants’ response included cancellation of claims 2 and 6, and addition
of new claim 21 containing the subject matter of claims 1, 2, 4, and 6, and
claims 1, 3, 4, and 7 were amended.
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