Appeal 2007-0040
Application 10/170,069
Patent 6,073,699
overlooked during prosecution of the original patent application; and (2)
which patentably distinguish over the prior art.
However, we conclude that neither of the criteria above is met in the
appeal before us. Contrary to Appellant’s statement (Second Reply Br.
5:15-17), reissue claim 4 does not distinguish over the prior art.9 Rather, as
discussed in the new ground of rejection infra, reissue claim 4 is fully
described in the prior art already of record in the patent for which Appellant
seeks reissue. Further, no limitation in reissue claim 4 was overlooked
during prosecution of the original patent application. Rather, every
limitation of reissue claim 4 is found in claim 11 rejected by the Examiner
and cancelled by Appellant during the prosecution of the original patent
application.
We also conclude that Appellant has not shown that an “objective
observer” would reasonably view the reissue claim as materially narrowed
thus avoiding the surrendered subject matter, and that with respect to this
argument Appellant has not rebutted the Examiner’s prima facie showing of
recapture.
9 The record before this panel does not show that a prior art search was
performed by the Examiner. Nor does the Examiner discuss any prior art
already of record in the patent for which Appellant is seeking reissue.
Facially, one could argue that the Examiner may have conceded that reissue
claim 4 is patentable over the prior art. Alternatively, the Examiner may
have felt the recapture rejection was sufficient and declined to reach other
possible grounds of rejection preferring instead to expedite prosecution.
Regardless of the Examiner's reason for not making a prior art rejection, this
panel has authority to do so. See 35 U.S.C. § 41.50(b).
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