Appeal No. 2005-0841
Application No. 08/230,083
An argument that only the subject matter of a rejected claim
can be viewed as surrendered territory appears to be inconsistent
with sound public policy made apparent by binding Supreme Court
and Federal Circuit precedent. Rather than applying a per se
rule, we believe that the proper inquiry requires a factual
analysis on a case-by-case basis to determine whether the
patentee is attempting to recapture by reissue subject matter
surrendered during the prosecution of the patent application.
The only fact-specific analysis we find in the briefs before us
appears in applicant's first argument--which, as noted above, did
not convince us that the examiner had erred.
Based on the premise that the surrendered subject matter can
only be the subject matter of a rejected claim, applicant
proceeds to apply an erroneous test under Clement to reach an
incorrect conclusion that reissue claim 14 does not violate the
recapture rule. Applicant's analysis, based on a flawed
premise, has not convinced us that at the time of the amendment
one skilled in the art would reasonably have viewed the subject
matter broader than the narrowing amendment as not having been
surrendered.
With respect to reissue claim 16, applicant presents an
analogous argument. See pages 15-19 of the Reply Brief filed
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