Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
I agree with the majority’s reasoning, however, to the extent that
during the ex parte prosecution of a reissue it should be sufficient, to shift
the burden to the applicant to show that recapture does not apply, for an
examiner to point out that broader aspects of a reissue claim with respect to
the patent claims prima facie relate to surrendered subject matter in view of
language that is changed or dropped in the reissue. A prima facie showing
could be made by pointing out that a particular limitation added in response
to a rejection during the original prosecution is not recited (in its entirety) in
the reissue claim. The applicant’s rebuttal could include showing that:
(1) the objective observer would recognize, when considering the
prosecution history as a whole, that the broader aspects of the reissue claim
do not relate to surrendered subject matter (which would serve the further
purpose, in many cases, of demonstrating that the reissue claim is patentable
over the prior art that was applied in the original application); or
(2) the reissue claim has been materially narrowed in other respects so
as to avoid the recapture rule.
KIS
DAN R. CHRISTEN
CONLEY. ROSE & TAYON P.C.
P. O. BOX 398
AUSTIN. TX 78767-0398
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