Appeal 2006-1068
Reissue Application 08/425,766
time the patent is issued--not during “fluid” patent prosecution where claims and
arguments can change depending on the circumstances, e.g., prior art applied and
amendments to claims. It is from a fixed perspective that the public (not the
patentee) must make an analysis of what the patentee surrendered during
prosecution. Moreover, an applicant (not the public) controls what arguments and
amendments are presented during prosecution. When an argument or amendment
is presented, it is the applicant that should be in the best position to analyze what
subject matter (i.e., territory to use the Supreme Court’s language) is being
surrendered.
2. The Examiner’s prima facie case
As already discussed by Judge Garris, the Examiner’s factual analysis
demonstrates that the Examiner has made out a prima facie case of recapture.
Thus, I find the Examiner’s rejection has created a rebuttable presumption that at
the time of the arguments one skilled in the art would reasonably have viewed the
subject matter of the argument as having been surrendered.
42
Page: Previous 31 32 33 34 35 36 37 38 39 40 41 42 43 44 45 Next
Last modified: November 3, 2007