Appeals 2006-2874 and 2006-2747
Applications 08/544,212 and 09/287,664
Patent 5,401,305
1 As far as we can tell, claim 28 essentially differs from claim 1 of the
2 patent in that it calls for a “metal oxide” whereas claim 1 of the patent calls
3 for “tin oxide.”
4 The Examiner found that claim 28 is (1) broader than rejected
5 application original claim 1 (prior to amendment) because it calls for a metal
6 oxide instead of tin oxide and (2) narrower than rejected application original
7 claim 1 because it limits the silicon compounds to those of application
8 original claim 11.
9 The Examiner also found “[t]he limitation of a tin oxide precursor [in
10 original application claim 1] is germane to the rejection made.” Examiner’s
11 Answer, page 8 (Appeal 2006-2684).
12 Appellants maintained before the Examiner that recapture cannot be
13 based on a lack of enablement rejection, i.e., recapture is limited to
14 rejections based on the prior art.
15 Appellants disagreed with the Examiner that the broadening of tin
16 oxide to metal oxide was germane to the lack of enablement rejection.
17 Citing In re Wesseler, 367 F.2d 838, 151 USPQ 339 (CCPA 1966),
18 Appellants maintain that recapture cannot apply apart from a prior art
19 rejection. Wesseler involved a rejection under 35 U.S.C. § 112, second
20 paragraph, involving indefiniteness. The CCPA held that an indefiniteness
21 rejection did not provide a basis for a recapture rejection. If a claim is
22 indefinite, it is difficult to see how one can determine what was surrendered.
23 On the other hand, when a rejection is based on lack of enablement
24 commensurate in scope with the breadth of a claim, it is usually apparent
25 what was surrendered.
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