Appeal No. 2005-0841
Application No. 08/230,083
therefore, impermissibly recaptures what was
previously surrendered.
* * *
Reissue claim 16 omits the ... limitation of
originally filed claim 12 (element Z), and
therefore, impermissibly recaptures what was
previously surrendered. [Supplemental
Examiner’s Answer, page 4]
The examiner's accurate factual analysis demonstrates that
the examiner has made out a prima facie case of recapture. 7
3. Applicant's response to the examiner’s case
(1) First argument
Applicant argues at pages 7-13 of the Appeal Brief filed
October 4, 2000 that (matter in brackets added):
Applicant is not removing limitations that
caused claim 1 in the original application to
be patented. Rather, as noted above,
independent claim 1 of the original
7 There is some possibility on this record that applicant might have
presented an argument that the examiner's reasoning at pages 2-4 of the first
Supplemental Examiner's Answer, mailed July 23, 2004, is in effect a "new ground
of rejection." It also might have been argued that such a new ground of
rejection was not in compliance with the rules in effect at the time the first
Supplemental Examiner's Answer was mailed in July of 2004. Additionally, there
is some possibility on this record that applicant might have argued that the
second Supplemental Examiner's Answer, mailed November 8, 2004, which
incorporated earlier answers (and the statement of the rejection made in those
earlier answers) was not in compliance with the rules in effect at the time it
was mailed in November of 2004. See 37 CFR § 41.43(a)(2) (2005), which became
effective on September 13, 2004. Notice of Final Rule, Practice Before the Board
of Patent Appeals and Interferences, 69 Fed. Reg. 49660 (Aug. 12, 2004),
reprinted in 1286 Off. Gaz. Pat. & Tm. Office 21 (Sep. 7, 2004). In the Reply
Briefs, filed September 28, 2004 and January 10, 2005, applicant did not make any
of these arguments or note any procedural objection to the manner in which the
examiner procedurally presented the examiner's position on appeal. Accordingly,
applicant has waived any procedural error which might have occurred in the manner
in which the examiner handled the appeal.
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