Appeal 2007-0493
Application 10/289,967
Patent 6,144,380
The Examiner’s accurate factual analysis with respect to claims 5-15,
17-37, 39-59, 61-85, and 87-101 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
claims 5-15, 17-37, 39-59, 61-85, and 87-101, the burden of persuasion now
shifts to the Appellants 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 - Appellants’ Response8
(1)
Clement: Step 1
With respect to independent reissue claims 5, 27, 49, and 77,
Appellants “stipulate[] that reissue independent claims 5, 27, 49 and 77 are
broader than originally issued independent claim 1 in at least one aspect.”
(Br. 7). Appellants also admit “the first step towards applying the recapture
rule has been satisfied.” (Br. 7). See also our discussion of Clement at
Section IV. A. (3) supra.
However, Appellants are silent as to in what respect the reissue claims
are broader than patent claim 1. We find that claims 5, 27, 49, and 77 are
8 Appellants’ response is contained in the Brief filed October 18, 2005, and
Reply Brief filed February 27, 2006.
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