Appeal 2005-0801
Application 09/848,628
withdrawal of subject matter); In re Willingham, 282 F.2d 353,
354, 357, 127 USPQ 211, 213, 215 (CCPA 1960) (no intent to
surrender where the applicant canceled and replaced a claim
without an intervening action by the examiner). Amending a
claim “by the inclusion of an additional limitation [has] exactly
the same effect as if the claim as originally presented had been
canceled and replaced by a new claim including that
limitation.” In re Byers, 230 F.2d 451, 455, 109 USPQ 53, 55
(CCPA 1956). [Footnote and citations to the CCPA reports
omitted.]
(8)
Allocation of burden of proof
What is the proper allocation of the burden of proof in ex parte
examination?
For reasons that follow, we hold that an examiner has the burden of
making out a prima facie case of recapture. The examiner can make out a
prima facie case of recapture by establishing that the claims sought to be
reissued fall within Substeps (1) or 3(a) of Clement.
For reasons that follow, we also hold that once a prima facie case of
recapture is established, the burden of persuasion then shifts to the applicant
to establish that the prosecution history of the application, which matured
into the patent sought to be reissued, establishes that a surrender of subject
matter did not occur.
As will become apparent, our rationale parallels practice in
determining whether subject matter is surrendered when a doctrine of
equivalents analysis occurs in infringement cases.
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