Appeal 2006-1989
Application 09/772,278
Patent 5,996,948
DISCUSSION – REJECTION UNDER 35 U.S.C. § 251
A. The Prima Facie Case
Our Findings of Fact 33-36 set out the basis upon which the Examiner
made a recapture rejection. As noted in Finding 37, the record supports the
Examiner’s findings.
Contrary to Appellant’s position at page 6 of the Reply Brief, we
conclude that the Examiner’s rejection sets forth a prima facie case of
reissue recapture. That is, the Examiner has established a rebuttable
presumption of recapture. Appellant may rebut the Examiner’s prima facie
case by showing, based on the record, that at the time the amendment was
made, an “objective observer” could not reasonably have viewed the subject
matter broader than any narrowing amendment as having been surrendered.
See Ex parte Willibald Kraus, Appeal 2005-0841, 2006 WL 3939191,
(Bd.Pat.App & Int., Sep. 21, 2006) for a discussion of reissue recapture.
B. Appellant’s Response To The Examiner’s Case
Appellant argues (Br. 14) that during prosecution of the original
application the defined relationship of the lower rim was not narrowed.
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