Appeal 2007-1432
Application 09/141,186
Patent 5,549,673
C. § 251 – Appellant’s Response8
(1)
Argument That Surrender Did Not Occur
With respect to reissue claims 16-26, Appellant argues “Applicant did
not admit during prosecution of the original patent application that the
elements in the independent claims were necessary to make them
patentable.” (Br. 3). We disagree.
As discussed in Section IV. B. supra, the Examiner has set forth a
prima facie case. We particularly note FF 28 and FF 46 which are directed
to Appellant’s own statements about the inclusion in the patent claims of
specific holding portion (patent claims 1 and 2), inserting instrument (patent
claim 2) and engaging means (patent claim 3) configurations to distinguish
over the prior art. Contrary to Appellant’s contention, we conclude that
Appellant’s amendments (FF 23 and 44) and argument (FF 27, 28, and 46)
resulted in a presumption of surrender.
Our conclusion is entirely consistent with the Federal Circuit’s en
banc decision in Honeywell Int'l, Inc. v. Hamilton Sundsrand Corp., 370
F.3d 1131, 71 USPQ2d 1065 (Fed. Cir. 2004), cert. denied, 125 S. Ct. 2928
(2005) (amending a first independent claim which has been rejected over the
prior art by incorporating the limitations of a second dependent claim which
had not been rejected, held to be an amendment involving "surrender" in the
context of the doctrine of equivalents). See also, Deering Precision
8 Appellant’s response is contained in the Brief (Br.) filed August 6, 2001,
fully replacing the defective Brief filed June 14, 2001.
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