Appeal 2007-1432
Application 09/141,186
Patent 5,549,673
Appellant further argues “that there were three independent claims
with varying scope indicates that there were various patentable aspects of the
invention.” (Br. 3). For purposes of resolving the appeal, we will agree.
Appellant’s three patent claims each include at least one of three
different specific limitations that distinguish that claim over the prior art.
However, Appellant fails to explain why he believes this precludes a
recapture rejection when claims are presented which include none of the
three surrender generating limitations. Thus, Appellant’s argument does not
rebut the presumption of surrender.
(2)
Argument That Claims 16-26 Are Materially Narrowed
As to An Overlooked Aspect
Appellant argues “[c]laims 16-18 . . . include a [limitation] that was
never a part of the original prosecution and therefore the inclusion of this
[limitation] eliminates any ‘recapture’ issue.” (Br. 3). We disagree.
We agree with Appellant that a reissue claim avoids recapture when it
is materially narrowed with respect to an overlooked aspect. See Section IV.
A. (12) supra. However, we do not find that Appellant has demonstrated
such in the current reissue application. While we agree that the claims
presented during the prosecution of the applications which resulted in the
patent do not explicitly recite a sloped surface on the sizing instruments, we
are unable to find that this limitation was overlooked.
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