Appeal 2007-0040
Application 10/170,069
Patent 6,073,699
territory was already covered by prior art or otherwise
unpatentable. The recapture rule thus serves the same policy as
does the doctrine of prosecution history estoppel: both operate,
albeit in different ways, to prevent a patentee from encroaching
back into territory that had previously been committed to the
public. (citations omitted.)
B. § 251- The Examiner’s Prima Facie Case
Our Findings of Fact 42-44 set out the basis upon which the Examiner
originally made a recapture rejection in the Final Office Action. As noted in
Finding of Fact 45, the record supports the Examiner’s findings with respect
to claim 4.
Basically, in the application which matured into the patent now sought
to be reissued, the Examiner rejected dependent claim 11 (among others)
under 35 U.S.C. § 112 and over the prior art. Appellant proceeded to cancel
claim 11 (and all other pending claims) and added new claims 28-30 which
included in limitations new limitations. Amended application claims 28-30
ultimately issued as patent claims 1-3.
The Examiner made three points in Findings of Fact 42-44:
(1) when faced with a Final rejection in the original application,
Appellant made a three significant amendments (See Findings
of Fact 42 (A)-(C));
(2) when faced with a Final rejection in the original application,
Appellant made two significant arguments (See Finding of Fact
43 and Findings of Fact 25-26);
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