Ex Parte Davis

Board of Patent Appeals and Interferences

Aug 1, 2003

08363966 (B.P.A.I. Aug. 1, 2003)

1 Application filed December 23, 1994, for reissue of U.S. Patent No. 4,856,805 (Application No.
07/064,658, filed June 22, 1987).
The remand being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 87
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DARREL B. DAVIS
____________
Appeal No. 2002-1841
Application No. 08/363,9661
____________
REMAND TO EXAMINER
____________
Before STONER, Chief Administrative Patent Judge, HARKCOM, Vice Chief
Administrative Patent Judge, and NASE, Administrative Patent Judge.
Per curiam.
REMAND TO THE EXAMINER
The above-identified application is being remanded to the examiner for
appropriate action.
Appeal No. 2002-1841
Application No. 08/363,966
Page 2
2 A copy of the Eggert opinion is attached to this opinion. An electronic copy of Eggert is available
at http://www.uspto.gov/web/offices/dcom/bpai/prec/RC010790.pdf.
BACKGROUND
1. A review of the file record indicates that claims 57 to 65 have been rejected
under 35 U.S.C. § 251 as attempting to recapture subject matter surrendered in the
application to obtain the original patent.
2. A precedential opinion concerning a reissue recapture rejection under
35 U.S.C. § 251 was decided May 29, 2003 in Ex parte Eggert.2 In Eggert, the majority
opinion applied the fact-specific analysis set forth in In re Clement, 131 F.3d 1464,
1468-71 45 USPQ2d 1161, 1164-66 (Fed. Cir. 1997), determined that under the facts
and circumstances before it, the “surrendered subject matter” was claim 1 of Eggert as
that claim existed prior to the post-final rejection amendment that led to the allowance of
claim 1 in the original patent, and decided that reissue claims 15-22 of Eggert were not
precluded (i.e., barred) by the “recapture rule.” Slip. op. at 39-45.
ACTION
We remand this application to the examiner for a determination of whether the
rejection under 35 U.S.C. § 251 remains appropriate in view of Ex parte Eggert.
If the examiner determines that the rejection under 35 U.S.C. § 251 remains
appropriate, the examiner is authorized to prepare a supplemental examiner's answer
specifically addressing the § 251 rejection. See 37 CFR § 1.193(b)(1). In the event that
Appeal No. 2002-1841
Application No. 08/363,966
Page 3
the examiner furnishes a supplemental answer, the appellant may file a reply brief in
accordance with 37 CFR § 1.193(b)(1).
If the examiner determines that the rejection under 35 U.S.C. § 251 is no longer
appropriate, the examiner should withdraw the rejection in an appropriate Office action.
CONCLUSION
This application, by virtue of its "special" status, requires immediate action, see
MPEP § 708.01.
If after action by the examiner in response to this remand there still remains
decision(s) of the examiner being appealed, the application should be promptly returned
to the Board of Patent Appeals and Interferences.
BRUCE H. STONER, JR. )
Chief Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
GARY V. HARKCOM ) APPEALS
Vice Chief Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2002-1841
Application No. 08/363,966
Page 4
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