Appeal No. 2005-0841
Application No. 08/230,083
Mentor [Corp. v. Coloplast, Inc.], 998 F.2d at 995-96,
27 USPQ2d at 1524-25; Ball, 729 F.2d at 1438, 221 USPQ
at 296; Seattle Box Co., 731 F.2d at 826, 221 USPQ at
574 (declining to apply the recapture rule in the
absence of evidence that the applicant's "amendment ...
was in any sense an admission that the scope of [the]
claim was not patentable"); Haliczer [v. United
States], 356 F.2d at 545, 148 USPQ at 569 (acquiescence
in the rejection and acceptance of a patent whose
claims include the limitation added by the applicant to
distinguish the claims from the prior art shows
intentional withdrawal of subject matter); In re
Willingham, 282 F.2d 353, 354, 357, 127 USPQ 211, 213,
215 (CCPA 1960) (no intent to surrender where the
applicant canceled and replaced a claim without an
intervening action by the examiner). Amending a claim
"by the inclusion of an additional limitation [has]
exactly the same effect as if the claim as originally
presented had been canceled and replaced by a new claim
including that limitation." In re Byers, 230 F.2d 451,
455, 109 USPQ 53, 55 (CCPA 1956). [Footnote and
citations to the CCPA reports omitted.]
(7)
Allocation of burden of proof
What is the proper allocation of the burden of proof in
ex parte examination?
For reasons which follow, we hold that an examiner has the
burden of making out a prima facie case of recapture. The
examiner can make out a prima facie case of recapture by
establishing that the claims sought to be reissued fall within
Substeps (1) or 3(a) of Clement.
For reasons which follow, we also hold that once a prima
facie case of recapture is established, the burden of persuasion
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