Appeal 2005-0801
Application 09/848,628
amendment was made, one skilled in the art could not reasonably have
viewed the subject matter broader than any narrowing amendment as having
been surrendered. As we have already fully discussed supra, Appellants are
free to rebut the presumption of surrender based on evidence generally
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
made. Appellants have not favored us with such rebuttal argument and
evidence in the record before us.
While Appellants’ brief does not favor us with such argument and
evidence with respect to Limitations A and B above, we note that Appellants
do present such argument and evidence at page 5 of the brief with respect to
the cancellation of claim 9. Appellants indicate that the record shows claim
9 was indicated as allowable, and while claim 9 was cancelled, the record
shows it was not incorporated into another claim. Appellants argue these
facts do not provide any support for a holding of surrender. We agree with
Appellants’ conclusion with respect to this cancellation.
Appellants only other argument is the decision in Patecell v. U.S.,
16 Cl.Ct 644, 12 U.S.P.Q.2d 1440 (US Claims Court 1989), is controlling
given the facts before us. Patecell held that there is no recapture when “the
reissue claim also is narrower than the cancelled claim in a way that is
material to the ‘error’” (See Patecell, 16 Cl.Ct at 652). As we have already
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