Appeal 2006-1454
Application 09/004,524
Patent 5,483,421
We disagree. As we discussed above, we have already concluded that the
Examiner has made out a prima facie case of recapture by establishing that the
claims sought to be reissued fall within Substeps (1) or 3(a) of Step 3 of Clement.
Step 1 of Clement explicitly determines whether and in what aspect any reissue
claims are broader than the patent claims. This is exactly what the Examiner has
done (Finding of Fact 91):
The sole issue upon which recapture depends in the instant Reissue
Application is the broadening of the patented claims of Application
'467 in 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 therefore germane to the prior art rejection[.]
Thus as we have also discussed above, we conclude the burden of persuasion
has shifted 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 reissue claims were materially
narrowed.
At pages 3-4 of the Reply Brief, Appellants cite Ball and argue “[t]he proper
focus is on the scope of the claims, not on the individual feature or element
purportedly given up during prosecution of the original application.” We disagree.
Appellants fail to address the later guidelines of Clement cited by the Examiner at
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