Appeal No. 2005-0841
Application No. 08/230,083
occurs through arguments alone.17 This may not be an exhaustive
list since other types of surrendered subject matter evidence are
conceivable.18 However, we are aware of no 35 U.S.C. § 251
recapture case in which the Supreme Court, the Federal Circuit,
the CCPA or the Court of Claims determined that surrendered subject
matter includes both the subject matter of a rejected claim that
is subsequently amended into allowable form and, on a
limitation-by-limitation basis, the territory falling between the
scope of the rejected claim and the amended allowable claim.
It is our view that, in this appeal, the prosecution history
of Application No. 07/642,475 set forth in the plurality opinion
establishes only each of original patent application claims 1, 3-5
and 7-11 as surrendered subject matter since the appellant either
canceled or amended each of those claims in order to overcome a
prior art rejection.
Our view is consistent with recent Federal Circuit decisions
Our view is clearly consistent with Clement which compared
reissue claim 49 with claim 42 before the amendments thereto which
made claim 42 allowable. The court found that claim 49 was
narrower in one area, namely, the brightness being "at least 59 ISO
in the final pulp."19 The court found that this narrowing related
17 See Hester.
18 See footnote 15.
19 The brightness being "at least 59 ISO in the final pulp" is one of
the limitations added to claim 42 that led to the allowance of that claim.
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