Appeal No. 2005-0841
Application No. 08/230,083
claim 12) into independent claim form. The majority has cited no
authority which directly supports the proposition that, under such
a factual circumstance, it is appropriate to define subject matter
which has been surrendered by referring to subject matter which has
been patented. The only authority, which supports referring to
patented subject matter as defining surrender, is limited to the
factual circumstance wherein surrender is evinced by argument
concerning a limitation of the patent claim. Hester, id. However,
even under that scenario, the surrendered subject matter is the
patent claim sans the argued limitation.
No argument is present in this case. Thus, the record of this
appeal contains no evidence specifically sanctioned by decisional
authority which supports the majority's determination that claim 14
recaptures surrendered subject matter because it is not limited to
the surrounding rim embodiment of original dependent claim 2 and
independent patent claim 1. On the other hand, the majority's
determination is contradictory to the intrinsic record evidence of
patent claim 11 which indisputably is not limited to this
surrounding rim embodiment.
In light of the foregoing, we consider the majority decision
as to claim 14 as conflicting with binding precedent which we are
obliged to follow and as conflicting with a reissue applicant's
35 U.S.C. § 251 right to enlarged claim scope which we are obliged
to implement.
-75-
Page: Previous 68 69 70 71 72 73 74 75 76 77 78 79 80 81 82 Next
Last modified: November 3, 2007