Ex Parte KRAUS - Page 105



          Appeal No. 2005-0841                                                        
          Application No. 08/230,083                                                  

          Reasonably viewed in light of the record as a whole, this                   
          limitation materially narrows claim 14 to the extent necessary to           
          avoid the recapture rule and allows the appellant to obtain through         
          reissue a scope of protection to which he is rightfully entitled            
          for an overlooked aspect of his invention.  The majority’s                  
          conclusion to the contrary stems from analyses which, among other           
          faults, attach too much weight to the broadened aspects of claim 14         
          and too little, if any, weight to the materially narrowed aspect of         
          the claim.                                                                  
          Claim 16, on the other hand, includes no materially narrowing               
          limitation and has a scope essentially similar to that of original          
          application claim 11 which was amended in light of a prior art              
          rejection.  Thus, claim 16 would allow the appellant to regain              
          through reissue subject matter that was surrendered to obtain the           
          patent.                                                                     
          Accordingly, the decision of the examiner to reject claims 14               
          and 16 under 35 U.S.C. § 251 should be reversed with respect to             
          claim 14 and affirmed with respect to claim 16.                             



          ) BOARD OF PATENT                                                           
          JOHN P. MCQUADE               )     APPEALS                                 
          Administrative Patent Judge   )       AND                                   
          )  INTERFERENCES                                                            

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