Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
example, our Finding of Fact 27 shows that Appellants specifically argued
Limitation C to distinguish over the prior art. Yet Appellants fail to address
this in their appeal arguments.
We conclude that “an objective observer viewing the prosecution
history would conclude that the purpose of the patentee’s amendment or
argument was to overcome prior art and secure the patent.” Kim v. ConAgra
Foods, Inc., 465 F.3d at 1323, 80 USPQ2d at 1502. We also conclude that
Appellants have not shown that at the time the amendment or argument was
made, an “objective observer” could not reasonably have viewed the subject
matter broader than the amended and/or argued limitation(s) as having been
surrendered.
Appellants also argue (e.g. Brief 10-11) that some of the limitations
(e.g. Limitation B) were not argued, and thus the recapture rule does not
apply. We disagree.
The fact that no arguments were made as to a particular limitation
does not help Appellants rebut the presumed surrender because surrender
may occur based solely on an amendment of the claim. See our discussion
at Section IV. A. (3) supra. Either an amendment or an argument or both
may result in surrender. Again, we reiterate that Appellants have not shown
that at the time the amendment or argument was made, an “objective
observer” could not reasonably have viewed the subject matter broader than
the amended and/or argued limitation(s) as having been surrendered.
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