Appeal 2007-0040
Application 10/170,069
Patent 6,073,699
Fact 26); and Appellant explicitly chose not to present a counterpart to
claim 11 (see Finding of Fact 25). All of these taken with the cancellation of
claim 11 are more than sufficient to support a rebuttable presumption of
surrender.
We conclude that an objective observer viewing the prosecution
history would conclude that the purpose of the patentee’s amendment or
argument was to overcome the rejections and secure the patent. Kim v.
ConAgra Foods, Inc., 465 F.3d at 1323, 80 USPQ2d at 1502. We also
conclude that Appellant has not shown that at the time the amendment or
argument was made, an “objective observer” could not reasonably have
viewed the subject matter broader than the amended and/or argued
limitation(s) as having been surrendered.
(4)
Materially Narrowed
Appellant argues (Second Reply Br. 5):
The recapture rule may be avoided if the reissue claims were
materially narrowed in other respects. See Hester, 143 F.3d at
1482 (emphasis added); Pannu, 248 F.3d at 1370. The purpose
of this exception to the recapture rule is to allow the patentee to
obtain through reissue a scope of protection to which he is
rightfully entitled for such overlooked aspects. Hester, 142 F.3d
at 1483.
We agree. As discussed at Section IV. A. (12) supra, a reissue claim
is materially narrowed and thus avoids the recapture rule when limited to
aspects of the invention (1) which had not been claimed and thus were
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