Appeal 2006-1865
Application 09/660,433
Patent 5,802,641
(4) reissue claims 14-100 are broader than the original patent claims with
respect to almost all the limitations added and arguments made to
overcome the rejection (See Findings of Fact 32-34).
The Examiner's accurate factual analysis demonstrates that the Examiner has
made out a prima facie case of recapture consistent with the test set forth in
Clement and amplified in Hester.
Further, we hold that with respect to the Examiner’s theory of the rejection,
the burden of persuasion now 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
reissued claims were materially narrowed.
C. Appellant’s Response
(1)
Abduction and Lithotomy Limitation
With respect to independent claims 14, 24, 48, 72, 81, and 91, Appellant
argues at pages 6, 12, 17, 22, 26, and 31 of the Brief, that the broadening with
respect to the abduction and lithotomy axes is not a material broadening (does not
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