Appeal No. 2006-2248
Application No. 10/158,618
This is a comparison of the allowed claim (Patent claim 1) to the Reissue claims.
Appellants’ reissue claim 9 is broader that Patent claim 1, in that reissue claim 9
reverts back to the same level of scope as original application claim 1 and fails to
include any of the twenty-five (25) specific components of Patent claim 1 and
includes none of the twenty-four (24) specific % w/w recited for the twenty-five
(25) specific components. These twenty-five (25) specific components and
twenty-four (24) specific % w/w were added to the subject matter of original
application claim 1 (in the form of original application claim 11) to gain allowance
of the patent. Appellants fail to explain the removal of any of these at least
forty-nine (49) limitations from reissue claim 9 and thus fail to rebut the
Examiner’s prima facie case of reissue recapture.
Appellants’ second 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.
- 47 -
Page: Previous 40 41 42 43 44 45 46 47 48 49 50 51 52 53 54 Next
Last modified: November 3, 2007