Appeal 2007-1432
Application 09/141,186
Patent 5,549,673
Appellant proceeded to re-write original application claims 14-16 (which
depended from claim 13) in independent form. Amended application claims
14-16 ultimately issued as patent claims 1-3.
The Examiner made three points all as set out in Findings of
Fact 44-46:
(1) when faced with a rejection in the original application, Appellant
made significant amendments (See Finding of Fact 44);
(2) when faced with a rejection in the original application, Appellant
made a significant argument (See Findings of Fact 45 and 28);
(3) reissue claims 16-26 are broader than the original patent claims
with respect to each of the limitations added and the argument
made to overcome the rejection (See Findings of Fact 44-47).
The Examiner’s accurate factual analysis with respect to claims 16-26
demonstrates that the Examiner has made out a prima facie case of recapture
consistent with the test set forth in Clement and amplified in Hester.
Further, we hold that with respect to the Examiner’s rejection of
claims 16-26, the burden of persuasion now 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 reissued claims were materially narrowed.
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