Appeal 2006-1068
Reissue Application 08/425,766
though the limitation ultimately was not necessary for distinguishing claim 1 of the
‘267 patent from the prior art.
Finally, we have fully considered the remaining arguments advanced by the
Appellants but consider them to be unpersuasive of error on the Examiner’s part.
For example, contrary to the Appellants’ argument in the Reply Brief filed March
14, 2005, Ex parte Eggert, 67 USPQ2d 1716 (Bd. Pat. App. & Int. 2003) is not
relevant to the subject appeal because it is not applicable to the pivotal issue before
us, namely, surrender based on prosecution arguments.
Summary
For the reasons set forth above and in the principal and supplemental
answers, it is our ultimate determination that the Examiner has established a prima
facie case of recapture which the Appellants have failed to successfully rebut with
argument or evidence to the contrary. See In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992)(the examiner bears the initial burden, on
review of the prior art, or on any other ground, of presenting a prima facie case of
unpatentability; if that burden is met, the burden of coming forward with evidence
or argument shifts to the applicant; after evidence or argument is submitted by the
applicant in response, patentability is determined on the totality of the record, by a
preponderance of evidence with due consideration to persuasiveness of argument).
Therefore, based on the totality of the record before us, we determine that the
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