Appeal No. 2005-2750
Application 09/460,221
Claim 6 & 7 also recites “-- in accordance with a control signal”.
However, the claim fails to recite the source of a control signal.
‘629 application, August 17, 1992, Office action, at 2. Thus, the examiner is incorrect
to contend that “applicant’s current argument that the amendment was intended to
overcome the rejection under 35 USC 112, 2[d] paragraph is not credible.”
Supplemental Answer at 17.
For the foregoing reasons, we agree with appellants that the cancellation of claim
1 in favor of dependent claims 2, 4, 5, and 7-9 did not constitute a surrender of subject
matter, as required by the second step of the Pannu reissue recapture analysis. Thus,
insofar as the question of reissue recapture is concerned, appellants are in the same
posture as if (1) the ‘629 application as filed had not included claim 1 but instead had
included, as the only independent claims, claims 2, 4, and 5-9, written in independent
form; (2) the examiner had rejected claim 6 under § 112, ¶ 2 for failing to recite the
source of the control signal and also under § 102 for anticipation by Nishiuchi; and (3)
appellants had responded by canceling claim 6 along with its dependent claims 16 and
26.
Our determination that the cancellation of claim 1 in favor of dependent claims 2,
4, 5, and 7-9 did not constitute a surrender of subject matter is a sufficient reason for
reversing the reissue recapture rejection, which is based entirely on the cancellation of
claim 1 in favor of those dependent claims, whose limitations the examiner has
characterized as being effectively added to claim 1 for the purpose of overcoming the
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