Appeal No. 2006-2248
Application No. 10/158,618
GARRIS, Administrative Patent Judge, concurring-in-result.
I write separately to express disagreement with the opinion of the majority
concerning the Examiner’s rejection of claims 2-19 as being unpatentable under
35 U.S.C. § 251 based on recapture. While I agree with the majority’s ultimate
determination that this rejection should be affirmed, my reasons for affirmance
differ completely from those of the majority.
In essence, the majority’s affirmance is based on the proposition that it is no
longer proper under any circumstances to define surrendered subject matter
appertaining to the recapture rule in terms of a claim which has been canceled or
amended in order to avoid a rejection. Instead, it is the majority’s view that
surrendered subject matter must now be defined under all circumstances as
including any claim which lacks a limitation added or argued by an Applicant in
order to avoid a rejection. As defined by the majority, surrendered subject matter
is “the subject matter of an application claim which was amended or canceled and,
on a limitation-by-limitation basis, the territory falling between the scope of (a) the
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