Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
(3)
Surrendered Subject Matter
Appellants argue (e.g. Supplemental Reply Br. 5) that only the claims
prior to the April 2, 1996 Amendment are the subject matter which was
surrendered by Appellants during the prosecution. We disagree. See our
discussion at Section IV. A. (6) supra. We conclude the surrendered subject
matter also includes, on a limitation-by-limitation basis, the territory falling
between the scope of (a) the application claim which was canceled or
amended and (b) the patent claim which was ultimately issued.
(4)
Materially Narrowed
Appellants argue that “the present reissue claims present a situation
similar to the reissue claims [in] Ball . . . where the reissue claims were
materially more narrow than the surrendered claim and thus held to not be
subject to the recapture rule.” (Br. 9). Further, Appellants argue that
recapture is avoided because (Supplemental Reply Br. 6):
All of the independent claims of the present reissue application
have been materially narrowed with respect to the surrendered
claim.
We disagree. As discussed at Section IV. A. (12) supra, a reissue
claim is materially narrowed and thus avoids the recapture rule when limited
to aspects of the invention (1) which had not been claimed and thus were
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