Appeal No. 2005-0841
Application No. 08/230,083
springy tongue (22') being arranged on a locking element (30) which
can be connected with the outer housing (3), and said locking
element (30) being guided over a dovetail guide (31) on the outer
surface of the outer housing (3)" has been deleted.30
The prosecution history of Application No. 07/642,475 set
forth in the plurality opinion establishes 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. In compliance with the
second step set forth in Clement, we now must determine whether the
surrendered subject matter has crept into the rejected reissue
claim. We therefore compare rejected reissue claim 14 with the
surrendered subject matter (i.e., original patent application
claims 1, 3-5 and 7-11).
Claim 14 is not broader than original patent application
claim 831 in any relevant aspect. 32 Claim 14 is narrower than
30 See footnote 29.
31 We have selected original patent application claim 8 as
representative of the "surrendered subject matter" since this claim is, in our
view, the closest in scope to rejected claim 14. In the rejection under appeal
(see final rejection mailed November 9, 1999), the examiner relied upon original
patent application claim 1 as the basis for the rejection. In the response to
argument section of the Supplemental Examiner's Answer (mailed July 23, 2004),
the examiner relied upon original patent application claim 10 as the basis for
the rejection. The concurrence relies upon original patent application claims 9
and 11 (which they believe have the most limitations in common with rejected
claim 14) as the basis for affirming the rejection. Viewing either claim 9 or
claim 11 as the "surrendered subject matter" does not change the outcome, in our
view, concerning claim 14 on appeal since the limitations of claim 9 and claim 11
are completely unrelated to the prior art rejection since those limitations are
met by the prior art applied in the prior art rejection. The selection of a
representative claim is a matter of exposition convenience. A proper Clement
analysis of any surrendered claim would result in the same outcome.
32 See footnote 29.
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