Appeal No. 2005-0841
Application No. 08/230,083
therefrom and a surrounding frame 10 joining
the stays 9." The inner frame, rim and rib
member limitations were not germane to the
prior art rejection. . . . .
Applicant repeats the gist of the argument in subsequent
briefs.
The ultimate point which we understand applicant to be
trying to make is that at the time of the amendment one skilled
in the art could not reasonably have viewed any subject matter as
having been surrendered because application claim 1 was never
amended. We disagree.
The "amendment" filed September 12, 1991, requesting
cancellation of claim 2 and the addition of claim 15 (and the
later cancellation of claim 1) is an amendment within the meaning
of the application rules. See 37 CFR § 1.119 (1991), which
provides that "claims may be amended by canceling particular
claims, by presenting new claims, or by rewriting particular
claims as indicated in §1.121." The addition of claim 15 was
"presenting new claims." The amendment is an amendment which can
result in subsequent application of the recapture rule.
Applicant's argument asks us to distinguish between
(1) an action incorporating the limitations of a
second claim (claim 2 in this case) into a first
claim (claim 1 in this case) and
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