Appeal No. 2006-0386
Application 09/460,222
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
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.
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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