Appeal No. 2006-2248
Application No. 10/158,618
declaration of Andrea L. Colby in rebutting the Examiner’s prima facie case of
reissue recapture.
Appellants’ first argument has not rebutted the presumption, upon which the
Examiner’s rejection is based, that at the time of the amendment one skilled in the
art would reasonably have viewed the subject matter of the narrowing amendment
as having been surrendered.
(3) Reissue Recapture - Second argument
Applicants argue at page 8 of the Appeal Brief filed May 11, 2004:
Reissue claim 9 is rejected by the Examiner as having “the same
scope as parent claim 1 and has humectant.” [Applicants] respectfully
notes that the addition of a limitation, i.e. humectant, by definition
changes the scope of reissue claim 9.
Thus, Appellants assert the rejection of claims 9-19 is overcome. We disagree.
Our findings of fact 56-57 set out the basis upon which the Examiner made a
recapture rejection. As noted in Finding 58, the record supports the Examiner’s
findings. The section cited by Appellants does not stand alone, nor is it even the
key language in the rejection. Rather, the key point is the following:
[T]he 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.
- 46 -
Page: Previous 39 40 41 42 43 44 45 46 47 48 49 50 51 52 53 Next
Last modified: November 3, 2007