Appeal No. 2005-0841
Application No. 08/230,083
Claim 16 is broader than original patent application claim
1141 in the following aspect: the limitation that "wherein the
clip connection (6) comprises a springy tongue" has been deleted.
Claim 16 is not narrower than original patent application claim 11
in any aspect.
Since claim 16 is as broad as or broader than original patent
application claim 11 in all aspects (i.e., claim 16 contains no
limitation narrowing the scope of original patent application claim
11), the recapture rule bars the claim. Clement, 131 F.3d at 1470,
45 USPQ2d at 1165.
The appellant argues that claim 16 has been narrowed relative
to the surrendered subject of original patent application claim 11
in that it includes the limitation of "the clip connection securing
the outer housing to the locking element and joining the inner
frame, the outer housing, and the check valve element to the motor
vehicle." We do not agree. Original patent application claim 1
included the limitation that "the assembled unit comprising the
41 We have selected original patent application claim 11 as
representative of the "surrendered subject matter" since this claim is, in our
view, the closest in scope to rejected claim 16. 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 11 as the basis for
the rejection. The concurrence relies upon original patent application claim 11
(which they believe have the most limitations in common with rejected claim 16)
as the basis for affirming the rejection. See footnote 30.
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