Appeal 2006-1865
Application 09/660,433
Patent 5,802,641
canceled and replaced by a new claim including that limitation.” In re
Byers, 230 F.2d 451, 455, 109 USPQ 53, 55 (CCPA 1956). [Footnote
and citations to the CCPA reports omitted.]
(8)
Allocation of burden of proof
What is the proper allocation of the burden of proof in ex parte examination?
For reasons that follow, we hold that an examiner has the burden of making
out a prima facie case of recapture. 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 Step 3 of Clement.
For reasons that follow, we also hold that once a prima facie case of
recapture is established, the burden of persuasion then shifts to the Appellant 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 are materially narrowed).
As will become apparent, our rationale parallels the practice in determining
whether subject matter is surrendered when a doctrine of equivalents analysis
occurs in infringement cases.
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