Appeal 2005-0801
Application 09/848,628
correctly placed the claims sought to be reissued within Substep
(3)(a) of Step (3) of Clement.
. . .
The Examiner’s accurate factual analysis demonstrates
that the Examiner has made out a prima facie case of recapture
[page 68].
This analysis is unsound for at least two reasons.
First, category 3(a) of Clement involves a comparison between a
reissue claim and a canceled or amended claim, not a patent claim.
Second, and more importantly, category 3(a) of Clement relates to
reissue claims that are (1) as broad or broader in an aspect germane to a prior
art rejection and (2) narrower in another aspect completely unrelated to the
rejection. A finding that a claim is as broad or broader in an aspect germane
to a prior art rejection without a corresponding finding that it is narrower in
another aspect completely unrelated to the rejection is not sufficient, under
the very definition of category 3(a) set forth by Clement, to establish a prima
facie case that the claim falls within this category. The latter finding is a
necessary and critical component of any such determination. The case law
and reasoning advanced in the concurring opinion fail to provide even a
scintilla of reasonable support for the suggestion that an examiner may
ignore the express instructions of Clement and relevant portions of the
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