Appeal No. 2005-0841
Application No. 08/230,083
case as including both (1) the rejected claim prior to the
amendment attempting to overcome a prior art rejection (i.e., the
limitations of original claims 1, 3-5 and 7-11), and (2) any claim
that lacks a limitation directed to subject matter added to
overcome a prior art rejection (i.e., the limitations of original
claims 2 and 12). In our view, the "surrendered subject matter" in
this case is only original patent application claims 1, 3-5 and
7-11 since the appellant either canceled or amended each of those
claims in order to overcome a prior art rejection. Thus, each of
original patent application claims 1, 3-5 and 7-11 correspond to
distinct and separate "surrendered subject matter."21
The following simplified example highlights the difference
between the majority's interpretation of the phrase "surrendered
subject matter" and our interpretation of the phrase "surrendered
subject matter." The original application is filed with claim 1 to
ABC (like original claim 1 from Application No. 07/642,475) and
dependent claim 2 adding limitation D to claim 1 (like original
claim 2 from Application No. 07/642,475). Claim 1 is rejected as
being unpatentable over reference X while claim 2 is objected to as
depending from a non-allowed claim. In response to that rejection,
the applicant cancels claims 1 and 2 and presents new claim 3 to
21 See Byers, 230 F.2d at 456-57, 109 USPQ at 56-57 and Clement, 131
F.3d at 1471-72, 45 USPQ2d at 1166. These cases support the proposition that in
applying the "recapture rule" the focus is on the narrowest of the cancelled
claims not the broadest cancelled claim. In Ball, 729 F.2d at 1432, 221 USPQ at
291, the court stated that "[d]ependent claims 8 and 9 are the only claims of the
original application critical to this appeal."
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