Appeal 2006-1454
Application 09/004,524
Patent 5,483,421
factual analysis demonstrates that the Examiner also has made out a prima facie
case of recapture. Further, we hold that with respect to the Examiner’s theory of
the rejection, the burden of persuasion now shifts to the applicant to establish that
the prosecution history of the application, which matured into the patent sought to
be reissued, establishes that a surrender of subject matter did not occur or that the
reissued claims were materially narrowed.
C. Appellants’ Response
(1)
To the Examiner’s First Theory of the Rejection
Applicants argue at pages 4-6 of the Appeal Brief filed August 16, 2000
that:
First, and of absolute importance, is that each of the claims now
in the reissue application is of a scope that was not considered during
the prosecution of the application leading up to the subject patent.
We believe the argument misses the point. The appropriate three-step process for
applying the recapture rule was articulated in Pannu, 258 F.3d 1366, 59 USPQ2d
1597 (Fed. Cir. 2001):
The first step is to “determine whether and in what ‘aspect’ the reissue
claims are broader than the patent claims.” “The second step is to
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