Ex parte Kraus

Informative decision only: persuasive authority, not binding precedent. In a reissue appeal under 35 U.S.C. 251, the examiner makes a prima facie case of recapture by showing that the reissue claims fall within Substeps (1) or 3(a) of In re Clement, whereupon the burden of persuasion shifts to the applicant to show from the prosecution history that no surrender occurred; the Clement steps are not per se rules. The Board also adhered to Decision I's view that the Substep (3)(a) rationale of the Eggert majority is inconsistent with North American Container and should no longer be followed before the USPTO, and that surrender is presumed to include subject matter broader than the patent claims in a manner directly related to limitations added by amendment or argued to overcome a rejection (the latter point per Decision I as quoted in the dissent). The decision supplements and finalizes Decision I (Feb. 22, 2006), and it says Ex parte Eggert's Substep (3)(a) rationale should no longer be followed in USPTO proceedings. It also distinguishes Ex parte Yamaguchi, 61 USPQ2d 1043, because the original prosecution there had no amendment or argument. For examiners, a recapture rejection needs only a prima facie showing that the claims fall within Clement Substeps (1) or 3(a), and the presumption of surrender is rebuttable. For applicants, the burden of persuasion then shifts, and speculative attorney argument about what a skilled artisan might do is no substitute for record evidence. Replacing an allowable dependent claim with a new independent claim that includes its limitations is treated as an amendment involving surrender, following Honeywell in the doctrine-of-equivalents context. The Board also treats Festo and the Federal Circuit decisions in Clement, Hester, Pannu and North American Container as applicable to surrender in reissue recapture. The Board was divided, 6 to 4 on claim 14, so the rule is persuasive guidance only. LEGAL TEST OR STANDARD: 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 Clement. Once a prima facie case is established, the burden of persuasion shifts to the applicant to establish that the prosecution history shows no surrender occurred. The Clement steps are not per se rules, and the presumption is rebuttable. Rebuttal may rest on the record and on any public document available to the public when an amendment was made. TRIGGERING FACTS: The applicant amended the original application during prosecution. He substituted new independent claims 16 (from allowable claim 12) and 14 for rejected claims, including the limitations the examiner found absent from the prior art. The reissue claims lacked limitations tied to that surrendered subject matter. The applicant elected Option 3 of Decision I and offered no rebuttal evidence, only argument about what a skilled artisan might or would not necessarily do. Yamaguchi is distinguishable where, as there, the original prosecution contained no amendment or argument. KEY QUOTE: "Speculative argument of counsel as to what is likely or not likely, what is necessarily true or not necessarily true, or what might occur or might not occur is not a substitute. . for evidence in the record." (Paper No. 52, p. 8) PRIOR PRECEDENT AFFECTED: Supplements and makes final Decision I (mailed February 22, 2006). Says the Substep (3)(a) rationale of the Eggert majority is inconsistent with North American Container and should no longer be followed or be applicable to proceedings before the USPTO. Distinguishes Ex parte Yamaguchi, 61 USPQ2d 1043 (Bd. Pat. App. & Int. 2001), as inapplicable where an amendment is present. Follows Honeywell (as cited in Decision I at p. 38) and Festo I, II and III (as cited), and applies In re Clement as read in light of Hester, Pannu and North American Container (per the concurrence). PRACTICE TIP: In a reissue appeal facing a recapture rejection, do not rely on the argument that the rule is per se or that a new independent claim is not an amendment. Come with record evidence, such as the prosecution history or public documents available when the amendment was made, to rebut the presumption of surrender. Do not rely on Eggert, and do not rely on speculation about what a skilled artisan might do.