Appeal No. 2006-2248
Application No. 10/158,618
As the Examiner notes, with respect to reissue application claims 2-19:
[C]laims 2-19 are of the same scope as cancelled claims 1-10
and the record of the application for the patent shows that the
broadening aspect (in the reissue) relates to subject matter that
applicant previously surrendered during the prosecution of the
application in order to obtain allowance there of [sic](Ex. Ans.
page 5).
That is, claims 2-19 fail to recite the limitations of “a specific composition
with a particular concentration for each ingredient” which was added to the
originally filed claims by amendment, i.e., the addition of claim 11 and
cancellation of claims 1-10. Thus, because the limitations of “a specific
composition with a particular concentration for each ingredient” are absent from
the reissue claims being rejected and since those limitations are germane as to why
the prior art did not reach claims containing these limitations, the Examiner has
correctly placed the claims sought to be reissued within Substep (3)(a) of Step (3)
of Clement.
The Examiner’s accurate factual analysis demonstrates that the Examiner
has made out a prima facie case of recapture.
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