Appeal 2005-0801 Application 09/848,628 The same policy considerations that prevent a patentee from urging equivalents within what the Supreme Court refers to as “surrendered territory” should prima facie prohibit the patentee from being able to claim subject matter within the surrendered territory in reissue. Accordingly, the “surrendered subject matter” that may not be recaptured through reissue should be presumed to include subject matter broader than the patent claims in a manner directly related to (1) limitations added to the claims by amendment (either by amending an existing claim or canceling a claim and replacing it with a new claim with that limitation) to overcome a patentability rejection and (2) limitations argued to overcome a patentability rejection without amendment of a claim. These presumptions are believed to place practical and workable burdens on examiners and Applicants. (11) Admissible evidence in rebuttal showing As in the case of surrender when applying the doctrine of equivalents, a reissue Applicant should have an opportunity to rebut any prima facie case made by an Examiner. What evidence may an Applicant rely on to rebut any prima facie case of recapture? We hold that the admissible rebuttal evidence generally should be limited to (1) the prosecution history of the application which matured into the patent sought to be reissued and (2) showings related to what was known by a person having ordinary skill in the art at the time an amendment was 62Page: Previous 55 56 57 58 59 60 61 62 63 64 65 66 67 68 69 NextLast modified: November 3, 2007