Appeal 2007-0493
Application 10/289,967
Patent 6,144,380
to the appeal before us. We disagree. Decisions of the United States Court
of Federal Claims are not binding precedent on patentability decisions of the
Office. For binding precedents from our reviewing courts, see our
discussion at Section IV supra.
Therefore, this argument fails to show Examiner erred in rejecting
based on recapture.
(4)
Newly claimed subject matter never canceled
The Examiner points to the cancellation of originally filed claims 14
and 31 to bolster the recapture rejection. Appellants argue that the subject
matter of originally filed claims 14 and 31 was never canceled during
prosecution:
The application from which the ‘380 patent issued was a divisional
application filed under 37 C.F.R 1.60 (“Rule 60”). As filed, only
claims 19-23 were submitted [in] the file history, see filing papers for
Application serial number 08/454,061 filed 30 May 1995. Under the
mechanics of Rule 60, those claims alleged to have been cancelled by
the Examiner were never part of the application. Because no claims
other than 19-23 were submitted, no other claims could have been
cancelled. Ergo, the Examiner's allegation that “pertinent” subject
matter was canceled [i.e., claims 14 and 31,] during this matter’s
original prosecution is without merit. (footnotes omitted)
(Br. 9). We disagree.
The prosecution history of the 6,144,380 patent is not limited to
Applications 08/454,061 and 08/801,251. Rather, the prosecution history
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