Ex Parte Henshaw et al

Board of Patent Appeals and Interferences

Apr 12, 2010

09621234 (B.P.A.I. Apr. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WAYNE JERALD HENSHAW,
MAILVAGANAM MAHENDRAN, and HENRY BEHMANN
____________

Appeal 2009-013798
Application 09/621,234
to reissue U.S. Patent 5,783,083
Technology Center 1700
____________

Decided: April 13, 2010
____________

Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
BRADLEY R. GARRIS, Administrative Patent Judge and
FRED E. MCKELVEY, Senior Administrative Patent Judge.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 15-18 and 24. We have jurisdiction under 35
U.S.C. § 6.
Appeal 2009-013798
Application 09/621,234

We REVERSE.
Statement of the Case
Appellants claim a system for withdrawing permeate from a liquid
substrate while leaving particulate matter therein (claim 15). An
embodiment of this system is illustrated in Figure 2 of Appellants’ Drawing,
which is reproduced below.

2
Appeal 2009-013798
Application 09/621,234

Figure 2 shows a system for withdrawing permeate from a liquid substrate.
Appellants’ claimed system comprises an assembly (i.e., a skein) 10
having a plurality of hollow fiber filtering membranes (i.e., fibers) 12
immersed in the liquid substrate and disposed generally vertically between
upper and lower generally cylindrical solid bodies (i.e., headers) 23, 24
comprised of a potting material with (i) the solid bodies having the
membranes sealingly secured therein, “at least a portion of the membranes
spaced apart from adjacent membranes by the potting material to a center to
center distance in the range from 1.2 to 5 times the outside diameter of the
membranes,” (ii) lumens of the membranes being in fluid communication
with permeate pans connected to the solid bodies 23, 24 and immersible in
the liquid substrate, and (iii) the membranes having a length between the
solid bodies in the range from 0.1% to 5% greater than the distance between
the solid bodies (claim 15; Fig. 2; col. 11, ll. 25-59).
Appellants’ claimed system also comprises a pump operable to apply
suction to the lumens of the membranes and a gas-distribution system to
produce bubbles in the liquid substrate (claim 15).
According to Appellants’ disclosure, bubbles produced by the gas-
distribution system serve the function of a scrub-brush for the outer surfaces
of the hollow fiber filtering membranes (i.e., fibers), thereby maintaining the
effectiveness of the assembly (i.e., skein) (abstract). This effectiveness is
dependent upon the membranes (i.e., fibers) having a particular length and
being disposed in the solid bodies (i.e., headers) so as to be kept free from
contacting one another (i.e., spaced from one another), whereby “[l]ack of
tension allows the fibers [i.e., membranes] to sway in bubbles flowing along
3
Appeal 2009-013798
Application 09/621,234

their outer surfaces making them surprisingly resistant to being fouled by
build-up of deposits” (id.).
Representative claim 15 reads as follows:
15. A system for withdrawing permeate from a liquid substrate
while leaving particulate matter therein, comprising,

(a) a non-pressurized reservoir other than a shell of a module for
containing the substrate;

(b) an assembly having a plurality of hollow fiber filtering
membranes immersed in the substrate each membrane having a
length greater than 0.5 m, the membranes together providing a
surface area of at least greater than 1 m2 and disposed generally
vertically between upper and lower generally cylindrical solid
bodies comprised of a potting material with (i) the solid bodies
having the membranes sealingly secured therein so as to prevent
the substrate from contaminating the permeate, at least a portion
of the membranes spaced apart from adjacent membranes by the
potting material to a center to center distance in the range from
1.2 to 5 times the outside diameter of the membranes, (ii)
lumens of said membranes being in fluid communication with a
permeate pan connected to one of the solid bodies and
immersible in the substrate or to a pair of permeate pans
connected one to each of the solid bodies and both immersible
in the substrate, and, (iii) said membranes having a length
between opposed surfaces of the solid bodies, in the range from
0.1% to 5% greater than the distance between opposed surfaces
of the solid bodies;

(c) a pump in fluid communication with said lumens of said
membranes through at least one permeate pan, said pump
operable to apply a suction to the lumens of the membranes to
draw a component of the substrate as permeate through said
membranes while leaving particulate matter in said substrate;
and,

4
Appeal 2009-013798
Application 09/621,234

(d) a gas-distribution system having through-passages with
openings distributed both radially and circumferentially
between the membranes operable to provide a flow a gas
through the through-passages to produce bubbles in the
substrate.

The Examiner rejects claims 15-18 and 24 under 35 U.S.C. § 251 “as
being an improper recapture of broadened claimed subject matter
surrendered in the application for the patent upon which the present reissue
is based” (Ans. 3).
In making the rejection, the Examiner made the following findings of
fact and conclusions of law:
Claims 1 and 9 in [Appellants’ original] application
08/690,045, now US 5,783,083, both have the following
proviso:

the improvement comprising:
each said header having said fibers spaced apart by
a flexible support means having a thickness
corresponding to a desired lateral spacing between
adjacent fibers, said support means extending over
only each terminal portion of said fibers near their
ends, so as to maintain said ends in closely-paced
apart relationship.

The proviso was added by amendment on January 12, 1998,
along with extensive arguments of how the newly added
limitation distinguishes the claimed invention over the prior
art cited by the Examiner. At p. 7 of that amendment, for
instance, the applicant's [sic] refer to the "flexible support
means having a thickness corresponding to a desired lateral
spacing between adjacent fibers" as the "second essential
element" which gave their invention a clear advantage over
the prior art. The record is clear, therefore, that the
applicants surrendered broader coverage when they added
the proviso to the claims in order to obtain a patent.
5
Appeal 2009-013798
Application 09/621,234

Claims 15-18 and 24 in this reissue lack that limitation and
thus they are rejected under 35 USC 251 as involving an
improper attempt to recapture surrendered subject matter.
See MPEP 1412.02.

It is noted that claim 15 in this reissue includes
limitations narrowing the scope of the claims as fallow [sic,
follows]: a pump; and

"at least a portion of the membranes spaced apart
from adjacent membranes by the potting material to a
center-to-center distance in the range from 1.2 to 5 times
the outside diameter of the membranes",

these limitations were not recited in claims 1 and 9 of
08/690,045, now US 5,783,083. Nevertheless, claims 15-18
and 24 in this reissue are missing the aforementioned
proviso, which was "an aspect to [sic] germane to a prior art
rejection". Therefore, the claims are "broader in scope in
some aspects and narrower in others".

(Ans. 3-5).

Issues
(1) Does the broader aspect of reissue claim 15 relate to subject matter
surrendered in the original prosecution?
(2) If so, has reissue claim 15 been materially narrowed in other
respects, so that the reissue claims may not have been enlarged, and hence
avoid the recapture rule?
6
Appeal 2009-013798
Application 09/621,234

Findings of Fact
Issue (1)
During prosecution of their original application 08/690,045,
Appellants filed an Amendment on 12 January 1998 by which independent
claims 1 and 9 were amended in view of a prior art reference to Kunio1
(Amendment 6, first full para.). The so-amended claims 1 and 9 were
ultimately issued as claims 1 and 9 of Appellants’ US Patent 5,783,083 for
which reissue is now sought in this appeal. Amended claims 1 and 9 are
directed to subject matter representatively illustrated in Figures 2 and 4 of
Appellants’ Drawings. These figures are reproduced below:

1 In the record of this appeal, Appellants in essence concede that the claim
amendments and arguments in the 12 January 1998 Amendment were made
in order to patentably distinguish over Kunio (App. Br. 8, second full para.;
Reply Br. para. bridging 4-5). We observe, however, that the Kunio
reference had not been applied in a rejection by the Examiner during original
prosecution. This fact has not been raised by Appellants or the Examiner as
an issue in the appeal before us. Therefore, we will not consider or further
comment upon this fact in our disposition of the appeal.
7
Appeal 2009-013798
Application 09/621,234

Figure 2:

Figure 2 shows a system (or a gas-scrubbed assembly) for withdrawing
permeate from a liquid substrate.
8
Appeal 2009-013798
Application 09/621,234

Figure 4:

Figure 4 shows an array of fibers disposed on spaced apart cards or flexible
support means.
Amended claims 1 and 9 are adequately represented by amended
claim 1 which is reproduced below wherein straight brackets denotes subject
matter deleted by Applicants, underlining denotes subject matter added by
Applicants, and curly brackets denotes subject matter added by this panel of
the Board:
1. (Amended) In a gas-scrubbed assembly comprising, a
microfiltration membrane device {e.g., skein 10 in Fig. 2} in combination
with a gas-distribution means {e.g., sparger 40 in Fig. 2} to minimize build-
up of particulate deposits on the surfaces of hollow fiber membranes
("fibers") {e.g., 12 in Fig. 2} in said device, and to recover permeate from a
multicomponent liquid substrate while leaving particulate matter therein,
said membrane device comprising,

9
Appeal 2009-013798
Application 09/621,234

a multiplicity of fibers, unconfined in a shell of a module, said fibers
being swayable in said substrate, said fibers being subject to a
transmembrane pressure differential in the range from about 0.7 kPa
(0.1 psi) to about 345 kPa (50 psi);

a first and second header {e.g., 23, 24 in Fig. 2} disposed in
transversely spaced-apart relationship within said substrate, each header
being formed with a potting resin cured in a resin-confining means;

said first header and second header having opposed terminal end
portions of each fiber sealingly secured therein, all open ends of said fibers
extending from a permeate-discharging face of at least one header;

permeate collection means {e.g., 28, 29 in Fig. 2} to collect said
permeate through at least one of said headers sealingly connected in open
fluid communication with permeate-discharging faces of said headers;

means for withdrawing said permeate; and,

said gas-distribution means is located within a zone beneath said skein
{sic, said microfiltration membrane device}, said gas-distribution means
having through-passages therein adapted to have sufficient gas flowed
therethrough to generate enough bubbles flowing in a column of rising
bubbles between and around said skein {sic} fibers, to keep surfaces of said
fibers awash in bubbles;

[the improvement comprising,]

said fibers, said headers and said permeate collection means together
forming a vertical cylindrical skein wherein said fibers are essentially
vertically disposed; said first header being upper and disposed in vertically
spaced-apart relationship above said second header with opposed faces of
said headers at a fixed distance, said fibers being substantially concentrically
disposed relative to the vertical axis between said headers;

each of said fibers having substantially the same length, said length
being from at least 0.1% greater, to less than 5% greater than said fixed
distance so as to permit restricted displacement of an intermediate portion of
each fiber, independently of the movement of another fiber; [and,]
10
Appeal 2009-013798
Application 09/621,234

the improvement comprising,

each said header having said fibers spaced apart by a flexible support
means {e.g., 15, 16 in Fig. 4} having a thickness corresponding to a desired
lateral spacing between adjacent fibers, said support means extending over
only each terminal portion of said fibers near their ends, so as to maintain
said ends in closely-spaced apart relationship,

said gas distribution means being disposed between said fibers and
having through-passages adapted to discharge said bubbles which rise
vertically substantially parallel to, and in contact with said fibers, movement
of which is restricted within said column;

whereby said permeate is essentially continuously withdrawn [while
concentration of said particulate matter in said substrate is increased].

(Amendment 1-2).
In their Amendment, Appellants made the following statements
regarding the apparatus disclosed by Kunio and the apparatus defined by
claim 1 (and claim 9):
The reference [to Kunio] discloses a skein having fibers
which are deliberately longer than in a conventional skein, as
are the fibers in applicants’ invention. [Amendment 6].

Kunio discovered that if the excess length was set for 1% to
4%, an extended vertical skein can withstand the rigors of
backwashing much better than with other excess lengths
either less than 1% or greater than 4%. [Id.].

However, even with 1% “slack”, Kunio observed some
damage with each backwashing cycle as graphically
illustrated in his Fig 3. [Id. at 6-7].

Applicants discovered that if the fibers in an extended
skein were not bundled, but potted in spaced-apart
relationship, spaced apart by a flexible means, there was no
11
Appeal 2009-013798
Application 09/621,234

damage to the fibers over an extended period. Applicants
discovered that with spaced-apart fibers in headers of an
extended skein, in which skein the specified “slack” may be
in a range wider than the range Kunio required for survival of
his skein during backwashing, skein fibers will be immune to
the damage suffered by Kunio’s skein fibers, provided the
ends of the fibers were potted in spaced-apart relationship in
a header which was not rigid. [Id. at 7].

Accordingly, claim 9 has been amended to specify the
first essential limitation (“slack”) in the preamble, and to
define the second essential element. This second essential
element is the “flexible support means having a thickness
corresponding to a desired lateral spacing between adjacent
fibers” in the headers. Claim 1 is directed to the skein of
amended claim 9 in combination with gas distribution
(typically, aeration) means. [Id.].

Appellants emphasized in their Amendment that Kunio’s fibers were
conventionally bundled such that the fibers touch each other and “chafe
against each other as they sway” (Amendment para. bridging 10-11).
Appellants argued “[s]uch chafing simultaneously weakens the walls of the
fibers and increases the likelihood of leakage of substrate between them”
(id.). Appellants further argued that their claimed invention solved the
chafing and leakage problem and expressed this argument as follows:
Applicants discovered how to solve the problem by
avoiding bundling the fibers in contact with one and
another. They sacrificed density of fibers to obtain better
longevity (no fiber-to-fiber abrasion) and a leak-proof
header. They did so by supporting spaced-apart fibers on a
flexible support of desired thickness before potting the fibers,
thus assuring a chosen spacing (specified by the center-to-
center dimensions) between fibers in the header, and assuring
the penetration of resin between every fiber. This additional
12
Appeal 2009-013798
Application 09/621,234

limitation has been introduced into the amended article
claims to the skein. [Amendment 11].

Finally, in their Amendment, Appellants identified the descriptive
support or basis for the claim 1 and claim 9 limitations “closely-spaced
relationship” and “flexible support means” as being at page 12, line 7, and
page 21, line 8, respectively in their Specification (Amendment 12). These
page and line disclosures of Appellants’ original Specification correspond to
column 7, line 45 (i.e., concerning the “closely-spaced relationship”
limitation), and column 12, line 57 (i.e., concerning the “flexible support
means” limitation), of Appellants’ ‘083 patent. This latter disclosure makes
clear that the “flexible support means” of claims 1 and 9 is described in
Appellants’ Specification with reference to flexible strips 15, 16 shown in
Figure 4 of the Drawing (see col. 12, l. 50 – col. 13, l. 2).
Issue (2)
The narrowing limitation in reissue claim 15 that membranes are
spaced apart “in the range from 1.2 to 5 times the outside diameter of the
membranes” is disclosed in the ‘083 patent (col. 7, ll. 28-31) but is not
recited in any of the patent claims. Nor does the limitation appear in any
claim presented during prosecution of the application which matured into the
'083 patent.
Principles of Law
Under the recapture rule, patentees are precluded from regaining the
subject matter that they surrendered in an effort to obtain allowance of the
original claims. N. Am. Container, Inc. v. Plastipak Packaging, Inc., 415
F.3d 1335, 1349 (Fed. Cir. 2005).
13
Appeal 2009-013798
Application 09/621,234

We apply the recapture rule as a three-step process: (1) first, we
determine whether, and in what respect, the reissue claims are broader in
scope than the original patent claims; (2) next, we determine whether the
broader aspects of the reissue claims relate to subject matter surrendered in
the original prosecution; and (3) finally, we determine whether the reissue
claims were materially narrowed in other respects, so that the claims may
not have been enlarged, and hence avoid the recapture rule. Id.
A surrender can occur by way of either arguments or claim changes
made during prosecution of the original patent application. Therefore,
arguments made to overcome prior art can evidence an admission sufficient
to give rise to a finding of surrender. Hester Indus., Inc. v. Stein, Inc., 142
F.3d 1472, 1480-81 (Fed. Cir. 1998).
In determining whether surrender has occurred, the proper inquiry is
whether an objective observer viewing the prosecution history would
conclude that the purpose of the patentee’s amendment or argument was to
overcome prior art and secure the patent. Yoon Ja Kim v. ConAgra Foods,
Inc., 465 F.3d 1312, 1323 (Fed. Cir. 2006).
In the context of a surrender by way of argument, the recapture rule
may be avoided when the reissue claims are materially narrower than the
patent claims in other overlooked aspects of the invention. The purpose of
this exception to the recapture rule is to allow patentees to obtain through
reissue a scope of protection to which they are rightfully entitled for such
overlooked aspects. Hester Indus., 142 F.3d at 1482-83.
14
Appeal 2009-013798
Application 09/621,234

Analysis
Step 1 of the Recapture Rule Analysis:
Determine whether and in what respect the reissue claims are broader in
scope than the original patent claims
On this record, the Appellants and the Examiner are in fundamental
agreement that reissue claim 15 is broader in scope than original patent
claim 1. Reissue claim 15 does not contain the “flexible support means”
limitation of patent claim 1 (App. Br. 5-6; Ans. 3-4; Reply Br. 2).

Step 2 of the Recapture Rule Analysis:
Determine whether the broader aspects of the reissue claims relate to subject
matter surrendered in the original prosecution
The Examiner determines that the broader aspect of reissue claim 15,
namely, the “flexible support means” limitation of patent claim 1, relates to
surrendered subject matter because, inter alia, Appellants presented
arguments in the original prosecution that the limitation patentably
distinguished over the prior art (Ans. 4). In response, Appellants disagree
with the Examiner but explain their disagreement merely by stating that,
during original prosecution, they “argued that the prior art Kunio device had
membranes [i.e., fibers] that were in contact with each other and so not
spaced at all” (App. Br. 8, second full para.).
The above principles of law establish that arguments made to
overcome prior art can evidence an admission sufficient to give rise to a
finding of surrender (Hester Industries, 142 F.3d at 1480-81) and that a
determination of surrender is based on whether an objective observer
viewing the prosecution history would conclude that the purpose of the
15
Appeal 2009-013798
Application 09/621,234

argument was to overcome the prior art and thereby secure the patent (Kim,
465 F.3d at 1323).
The findings of fact, supra, unequivocally show that, during original
prosecution, Appellants presented arguments concerning the “flexible
support means” limitation of patent claim 1 in order to distinguish over the
Kunio reference. For example, Appellants presented the following
arguments to the effect that their skein fibers are immune from the damage
suffered by Kunio’s skein fibers:
Applicants discovered that if the fibers in an extended
skein were not bundled, but potted in spaced-apart
relationship, spaced apart by a flexible support means, there
was no damage to the fibers over an extended period.
Applicants discovered that with spaced-apart fibers in
headers of an extended skein, . . . skein fibers will be
immune from the damage suffered by Kunio’s skein fibers,
provided the ends of the fibers were potted in spaced-apart
relationship in a header which was not rigid. [Amendment 7,
first full paragraph; italics added].

Accordingly, claim 9 has been amended to specify the
first essential limitation (“slack”) in the preamble, and to
define the second essential element. This second essential
element is the “flexible support means having a thickness
corresponding to a desired lateral spacing between adjacent
fibers” in the headers. Claim 1 is directed to the skein of
amended claim 9 in combination with gas distribution
(typically, aeration) means. [Id. at second full para.; italics
added].

An objective observer viewing the prosecution history of the ‘083
patent would conclude that the purpose of Appellants’ arguments,
concerning the “flexible support means” limitation of patent claims 1 and 9,
was to distinguish over Kunio so as to thereby secure the patent.
16
Appeal 2009-013798
Application 09/621,234

Significantly, this conclusion is not contested by the Appellants with any
reasonable specificity in the record before us. Instead, Appellants merely
present the earlier quoted statement that, during original prosecution, they
had “argued that the prior art device had membranes that were in contact
with each other and so not spaced at all” (App. Br. 8, second full para.).
However, this conclusion is not relevant to whether the “flexible support
means” limitation of claims 1 and 9 (i.e., the broader aspect of reissue
claim 15) was argued and thereby surrendered during original prosecution.
For this reason, we determine that the broader aspect of reissue claim 15
relates to subject matter surrendered in the original prosecution.

Step 3 of the Recapture Rule Analysis:
Determine whether the reissue claims were materially narrowed in other
respects, so that the claims may not have been enlarged, and hence avoid
the recapture rule
The Examiner and Appellants agree that reissue claim 15 is more
narrow than patent claim 1 with respect to the claim 15 limitation “at least a
portion of the membranes spaced apart from adjacent membranes by the
potting material to a center to center distance in the range from 1.2 to 5
times the outside diameter of the membranes” (App. Br. 7, first full para.;
Ans. para. bridging 4-5; Reply Br. para. bridging 4-5).
In order to assess whether this claim 15 limitation avoids the recapture
rule, we must determine whether the limitation renders reissue claim 15
materially narrower in other overlooked aspects of Appellants’ invention.
Hester Indus., 142 F.3d at 1482-83.
17
Appeal 2009-013798
Application 09/621,234

We consider this narrowing limitation of claim 15 to be material
because the record before us contains no rejection of the claims over prior
art.2 The absence of a prior art rejection evinces that the limitation, at least
facially, patentably distinguishes claim 15 from the prior art and accordingly
that the limitation renders the reissue claim narrower in a material sense.
See Ex parte Bradshaw, 2007 WL 2138943 *10 (BPAI 2007).
Furthermore, the claim 15 limitation is an overlooked aspect of
Appellants’ invention. As pointed out in the findings of fact above, the
spacing range recited in this limitation (i.e., “a center to center distance in
the range from 1.2 to 5 times the outside diameter of the membranes”) is
disclosed but not claimed in the ‘083 patent. For this reason, the spacing
range limitation is an overlooked aspect of the invention disclosed by
Appellants. See id.

2 We have not overlooked the Examiner’s statement that “the new claim
limitation e.g. spacing between potter membrane [sic] is old in the art as
evidenced in Patent US 5,248,426 cited in the record” (Ans. 5). The
Examiner's statement is not supported by specifically identified teachings in
the referenced patent. Appellants do not appear to dispute the correctness of
the Examiner's statement in the reply brief. See, e.g., Reply Br, para.
bridging 6-7. Instead, Appellants maintain that the U.S. patent is not "well
known" enough "to make anything 'old in the art'.'' In addition, the
Examiner's statement cannot be reconciled with the undisputed fact that no
prior art rejection of claim 15 has been advanced by the Examiner in this
appeal, including any rejection based on a combination of (1) Kunio
(Japanese Patent Application No. Sho 61 [1986]-292045) and (2) Stillian
(U.S. Patent 5,248,426). To resolve the issues before us on appeal, we have
no reason to voice an opinion on whether the combination of references
would render the claims unpatentable.
18
Appeal 2009-013798
Application 09/621,234

The Examiner does not consider the claim 15 limitation under review
to be an overlooked aspect of Appellants’ invention. The Examiner presents
the following argument in support of this view:
A response to whether Applicants are claiming an
additional invention or embodiment (overlooked aspects of
the disclosed invention). To avoid recapture the claims in
the new embodiment need to be directed to a "separate
invention"; however, claims 15-18 and 24 are directed to the
same invention or "system comprising a hollow fiber
membrane system within a no pressurized reservoir", and the
limitation "flexible support means . . ." is relevant to the
invention of claims 15-18 and 24.
Hester Industries Inc. v. stein Inc. [Hester, 142F. 3d at 1482-
83, 46 USPQ2d 1649-50);
and
B.E. Meyers & Co. v. United States, 56 USPQ 2d 1110 (US
CtFedCls 2000).

(Ans. 5).
We find nothing in the legal authority cited by the Examiner which
supports the proposition that “[t]o avoid recapture the claims in the new
embodiment need to be directed to a ‘separate invention’” (id.). Rather,
Hester, 142 F.3d at 1482-83, states that the recapture rule may be overcome
“when the reissue claims are materially narrower in other overlooked aspects
of the invention.” Nothing in the Examiner's quoted statement supports the
view that an overlooked aspect must relate to an invention separate from the
one defined by the original patent claims.3 Whether an invention was

3 The Examiner’s view is far narrower than the Office’s position found in
MPEP § 1412.02 I. C. (Rev. 7, July 2008): “If, however, the reissue
claim(s) are really claiming additional inventions/ embodiments/ species not
originally claimed (i.e., overlooked aspects of the disclosed invention), then
recapture will not be present.”
19
Appeal 2009-013798
Application 09/621,234

overlooked depends on what was claimed in the patent or during prosecution
of the application which matured into the patent.

Conclusions of Law
The broader aspect of reissue claim 15 relates to subject matter
surrendered in the original prosecution.
Nevertheless, for the above-stated reasons, reissue claim 15 has been
materially narrowed in other respects, so that the reissue claims have not
been enlarged, and hence avoid the recapture rule.
It follows that we do not sustain the Examiner’s § 251 rejection of
appealed claims 15-18 and 24 as being an improper recapture.

Order
The decision of the Examiner is reversed.
REVERSED

ssl

BERESKIN AND PARR LLP/S.E.N.C.R.L., s.r.l.
40 KING STREET WEST
BOX 401
TORONTO, ON M5H 3Y2 CA CANADA
20