Ex Parte Apps et al - Page 62


         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                       

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