Appeal No. 2005-2476
Application 08/862,039
We find no indication in either the Examiner’s rejection or Appellant's
arguments that the prosecution history as a whole (including the claims that issued
in U.S. Patent 5,777,580) was examined in determining whether reissue recapture
applies. In particular, do the ‘580 Patent claims that ultimately issued include the
allegedly surrendered subject matter, and if not, how does this impact the alleged
surrender? The record before us does not mention or address the prosecution
history “as a whole” in any way. Therefore, we request that the Examiner clarify
the record.
Accordingly, we remand for consideration of this issue.
Conclusion
This remand to the examiner pursuant to 37 C.F.R § 41.50(a)(1) is made
for further consideration of a rejection. Accordingly, 37 C.F.R § 41.50(a)(2)
applies if a supplemental examiner's answer is written in response to this
remand by the Board.
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