Appeal 2005-0801
Application 09/848,628
Limitation B: “at least one L shaped retainer
member to hold said hood to said abutment
surface” --found in patent claims 2, 4, and 5, but
not original application claims 1, 11, and 17.
Because limitations A and B are absent from the reissue claims being
rejected and since those limitations are germane as to why the prior art did
not reach claims containing limitations A and B, the Examiner has correctly
placed the claims sought to be reissued within Substep (3)(a) of Step (3) of
Clement.
As the Examiner accurately notes, with respect to reissue application
claims 8 through 13 in the Examiner’s Answer entered November 27, 2002,
at page 7:
[Independent] reissue claims 8 and 11 have been
broadened . . . because applicant has removed the
limitations relating to the “reinforcing groove” and
the “L shaped retainer member”.
The Examiner’s accurate factual analysis demonstrates that the
Examiner has made out a prima facie case of recapture.
3. Applicants' response to the Examiner’s case
(1) Arguments of Appeal Brief filed November 12, 2002
In the Appeal Brief filed March 17, 2003, Appellants cite numerous
authorities for the proposition that they are not precluded from broadening a
limitation added to a claim in obtaining its allowance. We agree that
Appellants are not precluded, so long as Appellants show that at the time the
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