Appeal 2005-0801
Application 09/848,628
discussed supra, we believe Clement and North American Container stands
for the proposition that the surrendered subject mater includes:
the subject matter of an application claim which was amended or
canceled and, on a limitation-by-limitation basis, the territory falling
between the scope of
(a) the application claim which was canceled or amended and
(b) the patent claim which was ultimately issued.
Accordingly, we disagree with Appellants’ Patecell argument.
(2) Arguments of Reply Brief filed January 29, 2003
Applicants, at page 2 of the Reply Brief, argues:
The court in In re Clement noted that canceling or
amending a claim may indicate an admission by
applicant that the scope of the claim before
cancellation or amendment was not patentable, but
also indicated that “it is not dispositive because
other evidence in the prosecution history may
indicate the contrary.” 131 F.3d at 1469 (emphasis
added).
We agree. However, Appellants then imply that the burden is on the
Examiner to determine what comprises this “other evidence.” We disagree.
As discuss supra, the burden falls on Appellants to show that at the time the
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.
70
Page: Previous 63 64 65 66 67 68 69 70 71 72 73 74 75 76 77 Next
Last modified: November 3, 2007