Appeal 2007-1432
Application 09/141,186
Patent 5,549,673
(8)
Allocation of burden of proof
What is the proper allocation of the burden of proof in ex parte
examination?
For reasons that follow, we hold that an Examiner has the burden of
making out a prima facie case of recapture. The Examiner can make out a
prima facie case of recapture by establishing that the claims sought to be
reissued fall within Substeps (1) or 3(a) of Step 3 of Clement.
For reasons that follow, we also hold that once a prima facie case of
recapture is established, the burden of persuasion then shifts to the Appellant
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 reissue claims are materially narrowed).
As will become apparent, our rationale parallels the practice in
determining whether subject matter is surrendered when a doctrine of
equivalents analysis occurs in infringement cases.
(9)
Burden of proof analysis
Our analysis begins with an observation made by our appellate
reviewing court in Hester, 142 F.3d at 1481-82, 46 USPQ2d at 1649:
[A]s recognized in Ball, the recapture rule is based on
principles of equity[5] and therefore embodies the notion of
5 The reissue statute has been characterized as being remedial in nature,
based on fundamental principles of equity and fairness and should be
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