Appeal 2005-0801
Application 09/848,628
Appellants point to their requested withdrawal of the finality of the
rejection and request for a chance to argue the allowability of cancelled
claims. Although Appellants admit that the application was in condition for
allowance, they contend that despite the above explicit request, the
Examiner never gave Appellants a chance to argue the allowability of the
cancelled claims. Thus, they contend that no surrender took place. We
disagree. As set forth in 35 U.S.C. § 102, “A person shall be entitled to a
patent unless [the Examiner can make out a prima facie rejection].” As a
register practitioner before the United States Patent and Trademark Office,
Appellants’ representative knows once the application was in condition for
allowance the Examiner is precluded by law from further prosecution of the
cancelled claims. We find Appellants’ request to be totally superfluous
having no impact (one way or the other) on any resulting surrender.
Applicants, at page 3 of the Reply Brief, argues:
The Clement court noted that “the recapture rule
does not apply when the broadening not only
relates to an aspect of the claim that was never
narrowed to overcome prior art, or argued as
distinguishing the claim from the prior art, but also
is not materially related to the alleged error.” 131
F.3d 1464, 1471.
We agree. However, Appellants then fail to favor us with any explanation
of how this is relevant to Limitations A and B. Again as discussed supra,
the burden falls on Appellants to show that at the time the amendment was
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