Appeal No. 2005-2664
Application 09/187,551
Was the prosecution history as a whole examined in determining
whether reissue recapture applies?
Reissue application 09/187,551, filed November 5, 1998, seeks to reissue
U.S. Patent 5,571,571, issued November 5, 1996, based on application 08/259,584,
filed June 14, 1994, as a continuation-in-part of application 08/184,331, filed
January 19, 1994, now abandoned.
Additionally, U.S. Patent 6,607,790, has issued based on a related copending
application 08/888,499, filed on July 7, 1997, as a continuation of application
08/538,056, filed October 2, 1995, now abandoned, which is a continuation of
application 08/184,331, filed January 19, 1994, now abandoned, which is the
parent application of the appeal now before us.
We note that with regard to claim amendments, the recapture rule does not
apply in the absence of evidence that the amendment was an admission that the
scope of the claim was not patentable. In re Clement, 131 F.3d 1164, 1469,
45 USPQ2d 1161, 1164. To determine whether an applicant surrendered particular
subject matter, we look to the prosecution history for arguments and changes to the
claims made in an effort to overcome a prior art rejection. Id. Deliberately
canceling or amending a claim in an effort to overcome a reference strongly
suggests that the applicant admits that the scope of the claim before the
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