Appeal 2006-2744
Application 09/664,794
Patent 5,584,962
Claims 36-482 stand rejected under 35 U.S.C. § 251 as being
unpatentable based on recapture.
The Examiner finds that the rejected claims do "not include the
limitations which applicant[s] presented in Application 08/247,003 [which
matured into the '962 patent for which reissue is sought] to overcome the
prior art of record" (Answer, mailed Dec. 13, 2005, (hereinafter Answer) 4).
Based on this finding, the Examiner concludes that Appellants are
"attempting to recapture subject matter that was surrendered in application
08/247,003" (id.).
In support of their opposing view, the Appellants present the
following argument:
The Applicants submit that the recapture rule does not bar the
patentability of independent claims 36 and 47, and thus these
claims and their respective dependent claims are patentable
under 35 U.S.C. § 251. Specifically, neither of these
independent claims impermissibly recaptures the claim scope
sought during the original prosecution of the '962 patent, as
each independent claim contains limitations narrowing them in
material respects relative to both the claims originally sought
during the prosecution of the '962 patent, and the claims
ultimately issued in the '962 patent. [Br., filed Feb. 14, 2003,
(hereinafter Br.) 4]
2 In addition to the bracketed informalities noted in the above reproductions
of claims 36 and 47, the claim 48 phrase "said selected substrate" is informal
because it lacks antecedent basis. These informalities are deserving of
correction.
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