Appeal No. 2005-0841
Application No. 08/230,083
Applicant's first argument has not rebutted the presumption,
upon which the examiner's rejection is based, that at the time of
the amendment one skilled in the art would reasonably have viewed
the subject matter of the narrowing amendment as having been
surrendered.
(2) Second argument
Applicant, at pages 7-15 of the Reply Brief filed
September 28, 2004, argues:
The analysis in Eggert is consistent with
... [applicant's] set out on page 6 of the
Appeal Brief of July 10, 2000 that "the only
subject matter that could be considered to
have been 'surrendered' by applicant in the
original prosecution could only have been the
scope of independent claim 1 as originally
filed."
In applicant's view, Eggert holds that only the rejected
claim (in this case, only a canceled originally filed claim) can
be viewed as having been surrendered. Effectively, applicant
invites us to establish and apply a per se rule said to be based
on Eggert. We decline the invitation. Insofar as Eggert might
be read as establishing a per se rule, North American Container
has now undermined the three-step framework analysis used in
Eggert. Furthermore, we noted, "the USPTO has been admonished
for trying to extract per se rules from generalized commentary
found in cases. See, e.g., In re Ochiai, 71 F.3d 1565, 1572, 37
USPQ2d 1127, 1133 (Fed. Cir. 1995)." 67 USPQ2d at 1727.
- 41 -41
Page: Previous 34 35 36 37 38 39 40 41 42 43 44 45 46 47 48 Next
Last modified: November 3, 2007