Appeal No. 2005-2750
Application 09/460,221
prior art rejection. Supplemental Answer at 14-15. Although the examiner’s
explanation of the rejection refers to the cancellation of claims 1 and 6, id. at 14, the
examiner has not explained whether and, if so, to what extent the cancellation of claim 6
constitutes a surrender of subject matter even if the cancellation of claim 1 does not.5
Nor has the examiner explained why such a surrender would support a rejection of the
reissue claims on the ground of reissue recapture.
The reissue recapture rejection is therefore reversed with respect to all of the
rejected claims.
REVERSED
WILLIAM F. PATE, III )
Administrative Patent Judge )
)
5 In contrast to the cancellation of claim 1, the cancellation of claim 6 apparently
was not done in response to the examiner’s § 112, ¶ 2 criticism thereof, which was
identical to his § 112, ¶ 2 criticism of claim 7 and thus presumably could have been
overcome by amending claim 6 in the same way as claim 7.
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