Appeal No. 2005-1674
Application 09/613,153
Description" fail to limit the invention to the combination of a buyback ratio and a price/sales
ratio, instead describing the invention as the combination of the buyback ratio with at least one
of a price/sales ratio and a price/earnings ratio. See, e.g., column 2, ll. 15-17 (explaining that the
invention includes, inter alia, the steps "selecting criteria for screening the selection of stock,
wherein the selected criteria consists of a buyback ratio and at least one of [a] price/sales ratio
and a price/earnings ratio for each stock." Col. 2, ll. 15-17. Significantly, the specification does
not assert that the price/earnings ratio has the same or substantially the same predictive value as
the price/sales ratio or that that the price/earnings ratio when used in combination with the
buyback ratio will "maximize" the performance of the market portfolio, as is alleged for use of
the price/sales ratio in combination with the buyback ratio. Col. 1, ll. 54-57. We therefore
conclude that the specification fails to clearly limit the invention to use of at least one of the
price/sales ratio and the price/earnings ratio, as is necessary to support the rejection.
We note that LizardTech, which held that LizardTech's sole disclosed embodiment was
failed to provide written description support for generic claim 21, is distinguishable on at least
the ground that appellant's specification provides plural embodiments falling within the generic
claim language.
E. The rejection for reissue recapture
The "recapture rule prevents a patentee from regaining through reissue the subject matter
that he surrendered in an effort to obtain allowance of the original claims." Kim v. Conagra
Foods, Inc., Nos. 05-1414, -1420, slip op. at 13 (Fed. Cir. Sept. 20, 2006) (quoting Pannu v.
Storz Instruments, Inc., 258 F.3d 1366, 1370-71, 59 USPQ2d 1597, 1600 (Fed. Cir. 2001)).
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