Appeal 2006-2744
Application 09/664,794
Patent 5,584,962
Finding 8, the Appellants acknowledge that these patent claim limitations
are not present in reissue independent apparatus claim 36 (Br. 6).
Additionally, no pre-tensioning limitations of any kind are present in reissue
independent method claim 47.
We begin our assessment of the second recapture rule step by
reviewing Findings 3-5. At Finding 3, we noted that Appellants' original
'003 application claim 11 was amended on July 5, 1995 to include a pre-
tensioning means limitation in clause (g) thereof. This amended claim was
rejected on October 25, 1995 over prior art which included the Brink patent
as observed at Finding 4. This amended claim was then further amended on
February 29, 1996 to include additional pre-tensioning means limitations in
a successful effort to avoid the aforementioned prior art rejections (see
Finding 5).
These findings reveal that the initial pre-tensioning means limitation
of July 5, 1995 was clearly surrendered by the Appellants because they
further amended claim 11 to include additional pre-tensioning means
limitations in order to avoid the prior art. By submitting these additional
limitations, the Appellants inferentially admitted that the July 5, 1995 claim
11 containing the initial pre-tensioning means limitation was not patentable
over the prior art.
For this reason alone, it is clear that the broader aspects of the reissue
claims, which contain no pre-tensioning limitations at all, relate to subject
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