Appeal No. 2005-0841
Application No. 08/230,083
establishing: (1) the scope of the surrendered subject matter; and
(2) that the surrendered subject matter has crept into a reissue
claim.
Once a prima facie case of recapture is established, the
burden of persuasion then shifts to the applicant to establish that
the rejected claim sought to be reissued does not recapture
surrendered subject matter.
THE PRECEDENT
The seminal Federal Circuit case regarding the "recapture
rule" is Clement which is set forth in pertinent part at
Appendix 7.
The Federal Circuit in Clement set forth an analytical process
for determining if the recapture rule should be applied against
claims in a reissue application. However, to properly understand
that analytical process one must first understand the cases that
proceeded Clement which are analyzed in Appendix 8.
How the analytical process set forth in Clement was applied in
the Clement case itself and in subsequent cases is set forth in
Appendix 9.
WHAT SUBJECT MATTER WAS SURRENDERED?
The question in this appeal is what subject matter was
surrendered?
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