Appeal 2007-0493
Application 10/289,967
Patent 6,144,380
Clement, which occurs after the determination that subject matter was
surrendered. In this case, the reissue claims are broader than application
claim 19 before the preliminary amendment in some aspects, but narrower in
others. Reissue claim 5 is narrower than application claim 19, for example,
in the requirement that user input is recognized as one or more search
strings. Reissue claim 5 is broader than application claim 19 in not requiring
the display of handwriting written on the current page of the book after a
mark-up button has been selected, a limitation that was further refined in
response to the prior art rejection.
Appellants’ reissue claims fail under Clement step 3(a) because the
reissue claims are as broad as or broader than original application claim 19,
prior to the preliminary amendment, in an aspect germane to a prior art
rejection, even though the reissue claims may be narrower in other aspects
completely unrelated to the rejection. The recapture rule bars the claims.
Thus, Appellants have not shown that the broader aspects of the
reissue claims do not relate to surrendered subject matter. Nor have
Appellants shown that the reissue claims have been materially narrowed in
other respects to avoid the recapture rule. I agree with the majority’s
conclusion with respect to recapture, that the Examiner’s rejection of claims
5-15, 17-37, 39-59, 61-85, and 87-101 under 35 U.S.C. § 251 should be
sustained.
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