Appeal 2006-1454
Application 09/004,524
Patent 5,483,421
At pages 6-9 of the brief, Appellants provide a review of Ball, 729
F.2d 1429, 221 USPQ 289. Appellants then conclude without explanation at
page 9 of the brief “just as the Ball case, in the instant case the broadening
aspect is not material to the error alleged.” Appellants again fail to set forth
any reason that establishes the Examiner erred with respect to the rejection.
We conclude that the Examiner has shown that the reissue claims are
broader than the patent claims, has shown that the broader aspects of the reissued
claim relate to surrendered subject matter, and has shown that the reissue claims
are not materially narrowed in other respects to avoid the recapture rule. Pannu,
258 F.3d at 1371, 59 USPQ2d at 1600 (Fed. Cir. 2001).
(2)
To the Examiner’s Second Theory of the Rejection
Appellants argue at page 2 of the Reply Brief filed November 20, 2000, that:
It is submitted that the Examiner is presenting the issue as if the
recapture doctrine relates solely to whether the claims are broader in
some aspects than the issued claims and totally ignores whether the
[reissue] claims are narrower in scope than the originally filed claims.
Thus, the examiner is presenting a recapture argument based solely on
the aspect of a broadening reissue when the claims are broader in
some aspects and narrower in others than the issued claims allowed.
However, this is not the proper test for recapture.
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