Appeal 2007-1432
Application 09/141,186
Patent 5,549,673
The burden is on Appellant to show that failure to claim a sloped
surface on the sizing instruments was an oversight. See Section IV. A. (11)
supra. We particularly note the following facts: (1) application claim 2
recited that the implant included a sloped surface (FF 5 and 10), and
(2) application claim 18 recited that the sizing instruments corresponded in
size and shape to the implants (FF 8 and 24). Given these facts, Appellant’s
failure to explicitly import the limitation found in application claim 2 into
application claim 18 looks more like a prosecution choice rather than an
oversight. In this case, Appellant’s failure to explicitly claim the limitation
is not sufficient by itself to show that the limitation was overlooked. Thus,
contrary to Appellant’s contention, we conclude that an “objective observer”
would not view the newly claimed limitation as an overlooked aspect.
Therefore, this argument fails to show Examiner erred in rejecting
based on recapture.
(3)
Claims 1-3
The Examiner has rejected reissue application claims 1-3 under
35 U.S.C. § 251 as being based upon a defective reissue declaration since
the present application seeks “recapture” of subject matter surrendered in
obtaining allowance of the patent claims. We reverse this rejection.
Because claims 1-3 are not subject to the recapture rule, a defective
declaration would not, in and of itself, invalidate them. See Clement, 131
F.3d at 1472, 45 USPQ2d at 1167.
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