Appeal 2007-0493
Application 10/289,967
Patent 6,144,380
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 50-52 set out the basis upon which the Examiner
originally made a recapture rejection in the Final Office Action. As noted in
Finding of Fact 53, the record supports the Examiner’s findings with respect
to claims 5-15, 17-37, 39-59, 61-85, and 87-101.
Basically, in the application which matured into the patent now sought
to be reissued, the Examiner rejected originally filed independent claim 19
over the prior art. Appellants proceeded to re-write application claim 19 by
adding new limitations. Amended application claim 19 ultimately issued as
patent claim 1.
The Examiner made three points in Findings of Fact 50-52:
(1) when faced with a rejection in the original application, Appellants
made a significant amendment (See Findings of Fact 50);
(2) when faced with a rejection in the original application, Appellants
made significant arguments (See Findings of Fact 51, 27,
and 39);
(3) reissue claims 5-15, 17-37, 39-59, 61-85, and 87-101 are broader
than the original patent claims with respect to almost all the
limitations added and arguments made to overcome the
rejection (See Findings of Fact 50-52).
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