Appeal 2006-1865
Application 09/660,433
Patent 5,802,641
The same policy considerations that prevent a patentee from urging
equivalents within what the Supreme Court refers to as “surrendered territory”
should prima facie prohibit the patentee from being able to claim subject matter
within the surrendered territory in reissue. Accordingly, the “surrendered subject
matter” that may not be recaptured through reissue should be presumed to include
subject matter broader than the patent claims in a manner directly related to (1)
limitations added to the claims by amendment (either by amending an existing
claim or canceling a claim and replacing it with a new claim with that limitation) to
overcome a patentability rejection and (2) limitations argued to overcome a
patentability rejection without amendment of a claim. These presumptions are
believed to place practical and workable burdens on examiners and Appellant.
(11)
Admissible evidence in rebuttal showing
As in the case of surrender when applying the doctrine of equivalents, a
reissue Appellant should have an opportunity to rebut any prima facie case made
by an examiner.
What evidence may an Appellant rely on to rebut any prima facie case of
recapture?
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