Appeal 2007-0040
Application 10/170,069
Patent 6,073,699
(3) reissue claim 4 is broader than the original patent claims with
respect the limitations added and arguments made to overcome
the rejections (See Findings of Fact 42(C), 43(B), 44, and 26).
The Examiner’s accurate factual analysis with respect to claim 4
demonstrates that the Examiner has made out a prima facie case of recapture
consistent with the test set forth in Clement and amplified in Hester.
Further, we hold that with respect to the Examiner’s rejection of
claim 4, the burden of persuasion now shifts to the Appellant to establish
that the prosecution history of the application, which matured into the patent
sought to be reissued, establishes that a surrender of subject matter did not
occur or that the reissued claims were materially narrowed.
C. § 251 - Appellant’s Response8
(1)
Originally filed claim 1
With respect to independent reissue claim 4, Appellant points out that
claim 4 is directed to the same feature recited in originally filed claim 1 that
was cancelled prior to examination. Appellant then argues that the
cancellation of originally filed claim 1 cannot be used as a basis to establish
surrendered subject matter. We agree as originally filed claim 1 was never
rejected under any statute.
8 Appellant’s response is contained in the Brief filed March 22, 2004, Reply
Brief filed June 18, 2004, and Second Reply Brief filed January 11, 2006.
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