Appeal 2007-0040
Application 10/170,069
Patent 6,073,699
subject matter within the surrendered territory in reissue. Accordingly, the
“surrendered subject matter” that may not be recaptured through reissue
should be presumed to include subject matter broader than the patent claims
in a manner directly related to (1) limitations added to the claims by
amendment (either by amending an existing claim or canceling a claim and
replacing it with a new claim with that limitation) to overcome a
patentability rejection and (2) limitations argued to overcome a patentability
rejection without amendment of a claim. These presumptions are believed
to place practical and workable burdens on examiners and Appellant.
(11)
Admissible evidence in rebuttal showing
As in the case of surrender when applying the doctrine of equivalents,
a reissue Appellant should have an opportunity to rebut any prima facie case
made by an examiner.
What evidence may an Appellant rely on to rebut any prima facie case
of recapture?
We hold that the admissible rebuttal evidence generally should be
limited to (1) the prosecution history of the application which matured into
the patent sought to be reissued and (2) showings related to what was known
by a person having ordinary skill in the art at the time an amendment was
made. Nevertheless, we will not attempt to divine, at this time, all evidence
that might be relevant. As with other issues that come before the USPTO,
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