Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
We conclude the argued limitations are not aspects overlooked in the
original prosecution. Since this conclusion is dispositive, so we need not
reach a conclusion here on whether this feature patentably distinguishes over
the prior art. We conclude that with respect to this argument Appellants
have not rebutted the Examiner’s prima facie showing of recapture.
VI. CONCLUSIONS OF LAW
(1) Appellants have failed to establish that the Examiner erred in
rejecting claims 10-43, 46-55, 58-66, 97-104, and 106-108 under
35 U.S.C. § 251 based on recapture. Specifically:
(a) Appellants’ arguments have not rebutted the presumption,
upon which the Examiner’s rejection is based, i.e., that at the time of
the amendment an objective observer would reasonably have viewed
the subject matter of the narrowing amendment and limitations argued
in the original application as having been surrendered.
(b) Appellants’ arguments have not established that the reissue
claims are materially narrowed with respect to an overlooked aspect
of the invention.
(2) Claims 10-43, 46-55, 58-66, 97-104, and 106-108 are not
patentable.
(3) Appellants have established that the Examiner erred in rejecting
claims 44-45, 67-68, and 84-94 under 35 U.S.C. § 251 based on recapture.
(4) On the record before us, claims 44-45, 67-68, and 84-94 have not
been shown to be unpatentable.
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