Ex parte Kraus

Informative decision only: persuasive authority, not binding precedent. In ex parte examination of a reissue application, when claims are broader than the patent claims in a limitation that was added by amendment (including by canceling a claim and replacing it with a new claim containing that limitation) to overcome a prior art rejection, the "surrendered subject matter" under Clement Substep (3)(a) includes, on a limitation-by-limitation basis, the territory between the canceled or amended application claim and the issued patent claim, not merely the rejected claim. The examiner bears the burden of a prima facie case of recapture by showing the claims fall within Clement Substeps (1) or (3)(a), and the burden of persuasion then shifts to the applicant, whose rebuttal evidence is generally limited to the prosecution history and what a skilled artisan knew at the time of the amendment. Ex parte Eggert, 67 USPQ2d 1716 (Bd. Pat. App. & Int. 2003), a precedential opinion, is said to be inconsistent with North American Container on Substep (3)(a), and the plurality says it should no longer be followed in USPTO proceedings. For an examiner, a prima facie recapture case is made simply by showing that a reissue claim omits a limitation added to overcome prior art and falls within Clement Substeps (1) or (3)(a), with no need to prove the applicant's subjective intent. For an applicant, a claim of intermediate scope between the rejected claim and the issued claim no longer escapes recapture if it omits the added limitation and is narrowed only in unrelated respects. The applicant must rebut with prosecution history evidence. The analysis follows In re Clement, 131 F.3d 1464 (Fed. Cir. 1997), and North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335 (Fed. Cir. 2005), which bind the Board. The Board also drew on Hester Industries v. Stein, Festo, and Warner-Jenkinson by analogy. This is a 6 to 5 plurality rationale on claim 14 with a concurrence in the result, so its weight is only persuasive. LEGAL TEST OR STANDARD: Clement three steps: Step 1, whether and in what aspect the reissue claims are broader than the patent claims (deleting a limitation is broader in that limitation's aspect). Step 2, whether the broader aspects relate to surrendered subject matter, by reviewing arguments and amendments in the prosecution history. Step 3, whether the surrendered subject matter has crept into the reissue claim: Substep (1) if as broad as or broader than the canceled or amended claim in all aspects, recapture bars the claim; Substep (2) if narrower in all aspects, the rule does not apply; Substep (3)(a) if as broad or broader in an aspect germane to a prior art rejection but narrower in another aspect completely unrelated to the rejection, recapture bars the claim; Substep (3)(b) if narrower in an aspect germane to a prior art rejection and broader in an aspect unrelated to it, recapture does not bar the claim. Surrendered subject matter is the canceled or amended claim plus, limitation by limitation, the territory between it and the issued claim. The examiner makes a prima facie case; the burden of persuasion then shifts to the applicant. TRIGGERING FACTS: Reissue claims 14 and 16 omitted the inner frame limitation (original claim 2) and the dovetail guide limitation (original claim 12). The examiner had indicated those claims were allowable if rewritten in independent form. The applicant canceled claims 2 and 12 and added new independent claims 15 and 16 combining the base claim with those limitations, and these issued as patent claims 1 and 11. Claim 14 was narrower only in unrelated respects (a second integral springy tongue and a first tongue spaced from the wall), so Substep (3)(a) barred it. Claim 16 was not narrower in any respect, so Substep (1) barred it. The applicant argued that original claim 1 was never amended and only the rejected claim could be surrendered. KEY QUOTE: "We believe North American Container stands for the proposition that it is (2) and not (1). Accordingly, we hold that it is (2)." (Paper No. 50, p. 22) PRIOR PRECEDENT AFFECTED: Ex parte Eggert, 67 USPQ2d 1716 (Bd. Pat. App. & Int. 2003): the plurality found its Substep (3)(a) rationale (surrendered subject matter is only the rejected claim) inconsistent with North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335 (Fed. Cir. 2005), and held it should no longer be followed or be applicable in USPTO proceedings. It follows In re Clement, 131 F.3d 1464 (Fed. Cir. 1997), Hester Industries Inc. v. Stein, Inc., 142 F.3d 1472 (Fed. Cir. 1998), and Pannu v. Storz Instruments Inc., 258 F.3d 1366 (Fed. Cir. 2001), and relies on In re Byers, 230 F.2d 451 (CCPA 1956), for amendment equaling cancellation and replacement. PRACTICE TIP: Do not argue in a reissue appeal that only the rejected claim is surrendered, or that rewriting an allowable dependent claim into independent form is not an amendment. Instead, identify each limitation added to secure allowance and show narrowing in that same limitation. Support any rebuttal with prosecution history and publicly available evidence of what a skilled artisan knew at the time of the amendment, not attorney affidavits.