Appeal No. 2005-0841
Application No. 08/230,083
the best position to analyze what subject matter (i.e., territory
to use the Supreme Court's language) is being surrendered.
2. The examiner's prima facie case
Our findings of fact 55-58 set out the basis upon which the
examiner made a recapture rejection. As noted in Finding 58, the
examiner's findings are supported by the record.
Basically, in the application which matured into the patent
now sought to be reissued, the examiner "objected to" originally
filed dependent claims 2 (dependent on claim 1) and 12 (dependent
on claim 1 through dependent claims 10 and 11). Why? Because,
they depended from claims which were rejected over the prior art.
The examiner indicated in the first Office action, however, that
application claims 2 and 12 would be allowable if re-written in
independent form.
Applicant proceeded to re-write application claim 2 in
independent form by (1) canceling claim 2 and (2) adding
application claim 15 which contained all the limitations of
original application claims 1 and 2. Claim 15 issued as patent
claim 1.
Applicant also proceeded to re-write application claim 12 in
independent form by presenting application claim 16 which
combined the limitations of original application claims 1, 10, 11
and 12. Claim 16 issued as patent claim 11.
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