Appeal 2006-1865
Application 09/660,433
Patent 5,802,641
relate to surrendered subject matter) and does not violate the recapture rule. We
agree.
Contrary to the Examiner’s position (Answer 4) this limitation was not
added by amendment. This limitation was present in the claims as originally filed.
Further, we find no argument in the prosecution history that this limitation
distinguishes over the prior art. We conclude that Appellant has rebutted any
prima facie case of recapture based on this limitation.
(2)
Longitudinal Axis Limitation
With respect to independent claims 14, 24, 48, 72, 81, and 91, and dependent
claims 16 and 94, Appellant argues at pages 6, 11, 12, 17, 22, 27, 32, and 35 of the
Brief, that the broadening with respect to the longitudinal axis is not an
impermissible broadening (does not relate to surrendered subject matter) and does
not violate the recapture rule. We agree as to independent claims 24, 48, 72, and
81. We agree as to dependent claims 16 and 94. We disagree as to independent
claims 14 and 91.
Appellant correctly points out that this feature is explicitly recited or
inherent to each of claims 16, 24, 48, 72, 81, and 94. As to these claims, we
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