Appeal 2007-0493
Application 10/289,967
Patent 6,144,380
comprises all the related applications (see FF 7). See Jonsson v. Stanley
Works, 903 F.2d 812, 818, 14 USPQ2d 1863, 1869 (Fed.Cir.1990)
(prosecution history of continuation-in-part application from same parent is
relevant). Thus, claims 14 and 31 were cancelled during prosecution.
However, we must agree with Appellants ultimate point, that the
cancellation referred to by the Examiner does nothing to bolster the
Examiner’s recapture rejection. The cancellation of claims 14 and 31
referred to by the Examiner was not in response to any rejection by the
Office. Thus, the cancellation of claims 14 and 31 cannot serve as evidence
of surrender.
While this argument shows Examiner error, the Examiner presented
this point only to bolster a rejection that was already complete. Thus, the
error is deemed to be harmless and Appellants’ argument fails to show the
Examiner’s rejection based on recapture is in error.
(5)
Claims 1-4
The Examiner has rejected reissue application claims 1-4 under
35 U.S.C. § 251 as being based upon a defective reissue declaration since
the present application seeks “recapture” of subject matter surrendered in
obtaining allowance of the patent claims. We reverse this rejection.
Because claims 1-4 are not subject to the recapture rule, a defective
declaration would not, in and of itself, invalidate them. See Clement, 131
F.3d at 1472, 45 USPQ2d at 1167.
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