Ex Parte RUSSO et al - Page 8

              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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