Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
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 37-39 set out the basis upon which the Examiner
originally made a recapture rejection in the Final Office Action. As noted in
Finding of Fact 40, the record supports the Examiner’s findings with respect
to claims 10-43, 46-55, 58-66, 97-104, and 106-108.
Our Finding of Fact 41 sets out an error in the Examiner’s basis for
the recapture rejection of claims 44-45, 67-68, and 84. As noted in Finding
of Fact 40, the record does not support the Examiner’s findings with respect
to claims 44-45, 67-68, and 84-94.
Basically, in the application which matured into the patent now sought
to be reissued, the Examiner rejected originally filed independent claims 1
and 7 over the prior art. Appellants proceeded to re-write application claims
1 and 7 by adding new limitations. Amended application claims 1 and 7
ultimately issued as patent claims 1 and 7.
The Examiner made three points in Findings of Fact 37-39:
(1) when faced with a Final rejection in the original application,
Appellants made a three significant amendments (See Findings
of Fact 37 (A)-(C));
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