Appeal 2006-1068
Reissue Application 08/425,766
unpatentable, but it is not dispositive because other evidence in the
prosecution history may indicate the contrary. See Mentor [Corp. v.
Coloplast, Inc.], 998 F.2d at 995-96, 27 USPQ2d at 1524-25; Ball,
729 F.2d at 1438, 221 USPQ at 296; Seattle Box Co., 731 F.2d at 826,
221 USPQ at 574 (declining to apply the recapture rule in the absence
of evidence that the applicant’s “amendment ... was in any sense an
admission that the scope of [the] claim was not patentable”); Haliczer
[v. United States], 356 F.2d at 545, 148 USPQ at 569 (acquiescence in
the rejection and acceptance of a patent whose claims include the
limitation added by the applicant to distinguish the claims from the
prior art shows intentional withdrawal of subject matter); In re
Willingham, 282 F.2d 353, 354, 357, 127 USPQ 211, 213, 215
(CCPA 1960) (no intent to surrender where the applicant canceled and
replaced a claim without an intervening action by the examiner).
Amending a claim “by the inclusion of an additional limitation [has]
exactly the same effect as if the claim as originally presented had been
canceled and replaced by a new claim including that limitation.” In re
Byers, 230 F.2d 451, 455, 109 USPQ 53, 55 (CCPA 1956). [Footnote
and citations to the CCPA reports omitted.]
(8)
Allocation of burden of proof
What is the proper allocation of the burden of proof in ex parte examination?
For reasons that follow, we hold that an Examiner has the burden of making
out a prima facie case of recapture. The Examiner can make out a prima facie case
of recapture by establishing that the claims sought to be reissued fall within
Substeps (1) or 3(a) of Clement.
For reasons that follow, we also hold that once a prima facie case of
recapture is established, the burden of persuasion then shifts to the Applicant to
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