Appeal 2006-2966
Application 09/148,152
amendment in order to avoid a prior art (or any other kind of) rejection, and
the Examiner does not argue otherwise. Instead, the Examiner believes his
recapture rejection is proper simply because Appellant authorized the
Examiner to amend claim 17 so as to remove from its coverage subject
matter generic to the elected species.
The Examiner's theory for this rejection is not well-taken. As
explained earlier, the recapture rule does not apply in the absence of
evidence that a claim amendment was an admission that the scope of the
unamended claim was not in fact patentable. Clement, 131 F.3d at 1468,
45 USPQ2d at 1164. Here, there is no evidence that Appellant's
authorization of the Examiner's amendment was an admission that the scope
of generic claim 17 was not patentable. Additionally, the Examiner points to
nothing and we find nothing in the prosecution history of the '177 patent
application which would lead an objective observer to conclude that the
purpose of the claim 17 amendment was to overcome prior art and secure the
patent. In the absence of such prosecution history, no basis exists for
determining that the subject matter defined by the reissue claims had been
surrendered during prosecution of the original application. Kim v. Conagra
Foods, Inc., 465 F.3d at 1323, 80 USPQ2d at 1502.
Conclusions of Law
(1) With respect to claims 1-39, the Appellant has failed to establish
on this record any error which is correctable by reissue under 35 U.S.C.
§ 251.
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