Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
(2) when faced with a Final rejection in the original application,
Appellants made significant arguments (See Finding of Fact 38
and Finding of Fact 27);
(3) reissue claims 10, 46, 58, 97, and 102 are broader than the original
patent claims with respect to almost all the limitations added
and arguments made to overcome the rejection (See Findings of
Fact 37-39).
The Examiner’s accurate factual analysis with respect to claims 10-43,
46-55, 58-66, 97-104, and 106-108 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 10-43, 46-55, 58-66, 97-104, and 106-108, 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.
The Examiner’s erroneous factual analysis with respect to claims
44-45, 67-68, and 84-94 demonstrates that the Examiner has not made out a
prima facie case of recapture for claims 44-45, 67-68, and 84-94.
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