Appeal 2006-1454
Application 09/004,524
Patent 5,483,421
limitations. Amended application claim 1 issued as patent claim 1. Applicants
also proceeded to re-write application claim 7 by adding limitations. Amended
application claim 7 issued as patent claim 7.
The Examiner made three points in Findings of Fact 90-92:
(1) “the reissue claims 21-25 and 34 are broader than the patented Claims
1-12 of Application '467 in two aspects that are germane to the prior
art rejection” because “reissue Claims 21 and 34 are recitations of
patented Claims 1 and 7 of Application '467 minus the limitations of
the ‘glass filled epoxy’ carder material and the requirement that the
carrier have a CTE of ‘at least 17 X 10-6 ppm/°C’”;
(2) the broader aspects of the reissue claims relate to surrendered subject
matter because these “aspects that were vigorously argued by the
Appellants, with agreement by the Board, as patentable over the prior
art of record in Application '467”; and
(3) these broader aspects are “therefore germane to the prior art rejection”;
As we discussed in Section III. A. (8), we hold that the Examiner can make
out a prima facie case of recapture by establishing that the claims sought to be
reissued fall within Substeps (1) or 3(a) of Clement. The Examiner's accurate
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