Appeal No. 2006-2248
Application No. 10/158,618
As for the second step, these broader aspects of the reissue claims clearly
relate to surrendered subject matter. In this latter regard, I define surrendered
subject matter as subject matter involved with the deliberate cancellation or
amendment of a claim in an effort to overcome a prior art rejection since this
deliberate action suggests that an applicant admits that the scope of the claim prior
to cancellation or amendment is unpatentable. See Clement, 131 F.3d at 1468-69,
45 USPQ2d at 1164. Here, it is uncontested that original application claims 1-10
were amended in an effort to overcome a prior art rejection and that the amended
claims ultimately were canceled in order to obtain the patent for which Appellants
seek reissue. Because original application claims 1, 2, and 10 were first amended
and then canceled, it is appropriate to consider the subject matter defined by these
claims as surrendered. Importantly, argued reissue claim 2 is actually broader than
original application claim 1/2/10 since the former, unlike the latter, does not
contain the limitation “said composition being substantially free of irritating
compounds” (original application claim 1). Relative to original application claim
1, argued reissue claim 9 is of equal scope in all aspects except that it contains the
additional limitation “humectant” which will be discussed in detail infra.
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