Appeal 2006-2744
Application 09/664,794
Patent 5,584,962
matter surrendered in the original prosecution as required by the second
recapture rule step.5 The Appellants believe that the reissue method claims
on appeal cannot involve surrendered subject matter because "no method
claim was ever presented during prosecution of the '962 patent" (Br. 14).
However, surrender is not avoided merely by categorizing the claim 47
invention as a method rather than an apparatus. It is the scope of a claimed
invention, not its categorization, which determines whether surrendered
subject matter has crept into a reissue claim. Since the scope of claim 47
encompasses broader aspects with no pre-tensioning limitations at all, these
claim 47 broader aspects relate to surrendered subject matter.
We begin application of the third recapture rule step by observing that
both the Appellants and the Examiner agree that the reissue claims on appeal
are narrower than the patent claims with respect to features other than the
broader pre-tensioning aspects discussed above (Br. 6-7, 14; Answer paras.
bridging 4-5 and 8-9). Specifically, the reissue claims, unlike the claims
which were prosecuted and issued in the '962 patent, are limited to a frame
having an outer shell including a lower outer shell portion having
downwardly facing surfaces constructed and arranged to be placed on a
substantially flat support surface for supporting the apparatus and an upper
outer shell portion movably connected to the lower shell portion for
5 In the Examiner's more expansive view, the surrendered subject matter also
includes the additional pre-tensioning means limitations submitted on
February 29, 1996 in the Appellants' successful effort to avoid the prior art
(Answer 8). This view is supported by the rationale expressed in the
plurality opinion of Ex parte Willibald Kraus, 2006 W.L. 3939191 (Bd. Pat.
App. & Inter. 2006). Under the circumstances of this appeal disposition, we
need not express an opinion on the merits of the Examiner's view.
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