Appeal 2006-1865
Application 09/660,433
Patent 5,802,641
Additionally, the opinion above proposes that surrendered subject matter in
Subset (3)(a) of Clement is, not only the subject matter of an application claim
which was amended or canceled but also, "on a limitation-by-limitation basis, the
territory falling between the scope of (a) the application claim which was canceled
or amended and (b) the patent claim which was ultimately issued" (page 26).
Whether this "territory" may be properly considered surrendered subject matter
depends on the factual evidence relevant to the surrender issue. Hester Industries,
Inc. v. Stein, Inc., 142 F.3d 1472, 1482, 46 USPQ2d 1641, 1649 (Fed. Cir. 1998) is
an example of a case in which factual evidence supported a determination that the
aforementioned "territory" included surrendered subject matter. In contrast, In re
Richman, 409 F.2d 269, 274-275, 161 USPQ 359, 363 (CCPA 1969) is an example
of a case in which the court expressly stated that this "territory" did not contain
surrendered subject matter.
Notwithstanding my disagreement with these aspects of the panel opinion, I
reiterate that the record of this appeal establishes a prima facie case of recapture
based on surrender which is evinced by prosecution argument. Hester, 142 F.3d at
1482, 46 USPQ2d at 1649. Therefore, I join with my other panel members in
affirming the § 251 rejection of the reissue claims on appeal.
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