Appeal No. 2005-0841
Application No. 08/230,083
taken together emphasize the error of the majority's decision to
affirm the claim 14 rejection.
In our view, the basic error in the majority's affirmance
stems from the failure to appreciate that a determination of
surrendered subject matter is a fact dependent analysis based on
evidence. As reflected by the decisional authority cited below,
surrendered subject matter may be evinced by a variety of factual
circumstances. For example, evidence of surrendered subject matter
may be in the form of a claim alone as it existed prior to
cancellation and/or amendment. In re Byers, 230 F.2d 451, 455, 109
USPQ 53, 55 (CCPA 1956). Additionally, surrender may be evinced by
such a claim in combination with argument. In re Clement, 131 F.3d
1464, 1470, 45 USPQ2d 1161, 1165-66 (Fed. Cir. 1997). Surrender
also may be evinced by argument alone. Hester Industries, Inc. v.
Stein Inc., 142 F.3d 1472, 1480, 46 USPQ2d 1641, 1648 (Fed. Cir.
1998). Other types of surrendered subject matter evidence are
conceivable.15
In the case before us, it is undisputed that, during
prosecution of the original application, the examiner's prior art
rejections were avoided, sans argument, by cancelling the sole
independent original claim 1 and rewriting the examiner-denominated
allowable subject matter of dependent claim 2 (as well as dependent
15 For example, surrender may also occur via an admission made in the
body of the specification or via an asserted claim distinction with respect to
nonapplied prior art cited in an Information Disclosure Statement.
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