Appeal No. 2005-0841
Application No. 08/230,083
in a manner directly related to (1) limitations added to the
claims by amendment (either by amending an existing claim or
canceling a claim and replacing it with a new claim with that
limitation) to overcome a patentability rejection and (2)
limitations argued to overcome a patentability rejection without
amendment of a claim. These presumptions are believed to place
practical and workable burdens on examiners and applicants.
(10)
Admissible evidence in rebuttal showing
As in the case of surrender when applying the doctrine of
equivalents, a reissue applicant should have an opportunity to
rebut any prima facie case made by an examiner.
What evidence may an applicant rely on to rebut any prima
facie case of recapture?
We hold that the admissible rebuttal evidence generally
should be 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.
Nevertheless, we cannot attempt to divine, at this time, all
evidence which might be relevant. As with other issues which
come before the USPTO, such as obviousness and enablement, the
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