Appeal 2006-1454
Application 09/004,524
Patent 5,483,421
known these facts at the time the amendment was made. Therefore, we find this
evidence is inadmissible to rebut the Examiner’s prima facie case.
Furthermore, even if admissible, Appellant Gedney’s declaration speaks of
“recent developments” that occurred before the date of Appellants’ invention and
before the original patent application. Thus, the declaration supports recapture as
Appellants knew these facts at the time the surrender generating amendment was
made. That is, Appellants made the amendment and presented arguments while
fully cognizant of these “facts.” Therefore, the declaration supports the
Examiner’s rejection.
Additionally, the “recent developments in encapsulation technology” are not
those of Appellants. This is confirmed in Appellants’ Specification at column 8,
lines 12-15, where the only disclosure of encapsulating is in reference to the Soga
patent. As stated in the declaration, it is the “higher coefficients of thermal
expansion” that Appellants recognized as being made possible. The declaration
explicitly indicates this is Appellants’ contribution to the art.
Appellants’ arguments have not rebutted the presumption, upon which the
Examiner’s rejection is based, i.e., that at the time of the amendment an objective
observer would reasonably have viewed the composition and CTE subject matter
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