Appeal 2006-1068
Reissue Application 08/425,766
Appellants, through their admission effected by way of repeated prosecution
arguments, have surrendered claim scope not restricted to the liquid filter
limitation. Because appealed claim 1 unquestionably encompasses this
surrendered claim scope, this claim violates the recapture rule.5
We hereby sustain, therefore, the Examiner’s rejection of appealed claims
1 through 20 of this reissue application as being unpatentable under 35 U.S.C.
§ 251 based on recapture.
CONCLUSION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
) BOARD OF PATENT
)
BRADLEY R. GARRIS ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES
5For completeness, we point out that claim 1 has not been materially narrowed in
any respect and therefore no possibility exists that the recapture rule might be
avoided in the subject appeal by virtue of a material narrowing. See Hester, 142
F.3d at 1482-83, 46 USPQ at 1649-50.
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