Ex Parte Steenburg - Page 62



           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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