Ex parte Kraus

and hterferences
Paper No. 52
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte WlLLlBALD KRAUS
Appeal 2005-0841
~ ~ ~ l i c a t i o n	08/230,083'
Technoloav Center 2600 I 	SEP 2 12006 	1
-ORAL HEARING: April 7,2005
Before: FLEMING, Chief Administrative Patent Judqe, and GARRIS, McQUADE,
JERRY SMITH, RUGGIERO, GROSS, DELMENDO, FRANKLIN, MacDONALD and
NAPPI, Administrative Patent ~udqes.*
PER CURIAM
1 Application filed April 20, 1994, seeking to reissue U.S. Patent 5,105,731, issued April 21, 1992, based
on application 071642,475, filed 	January 17, 1991. The real party in interest is TRW Automotive
Electronics & Components Kmlh and Co., KG, previously known as TRW United-Carr GmbH and Co.,
KG. Appeal Brief (second submission filed October 4, 2000), page 1.
2 The appeal was originally heard by Administrative Patent Judges McQuade, Nase and Delmendo.
Subsequent to oral argument, the panel was expanded to include Chief Administrative Patent Judge
Fleming and Administrative Patent Judges Garris, Jerry Smith, Ruggiero, Gross, Franklin, MacDonald
and Nappi. Applicant was offered, but declined, an opportunity for additional oral argument. Subsequent
to the decision mailed February 22, 2006 (Decision I), Administrative Patent Judge Nase retired.

Appeal No. 2005-0841
Application No. 081230,083
MEMORANDUM OPINION and ORDER
This MEMORANDUM OPINION and ORDER supplements and makes the
decision of this Board mailed on February 22, 2006 (Decision I) a final decision.
The Examiner has rejected claims 14 and 16 of the reissue application on appeal
as being unpatentable under 35 U.S.C. 251 based on recapture. With respect to claim
14, a 6 to 4 majority of the panel affirms 	the decision of the Examiner. With respect to
claim 16, the panel unanimously affirms the decision of the Examiner.
A ( I ) plurality opinion authored by Chief Judge Fleming, joined by Judges Jerry
Smith, MacDonald and Nappi, (2) a concurring opinion authored by Judge Gross, joined
by Judge Ruggiero, (3) an opinion concurring-in-part and dissenting-in-part authored by
Judge Garris, joined by Judges Delmendo and Franklin, and (4) an opinion
concurring-in-part and dissenting-in-part authored by Judge McQuade, follow.
FLEMING, Chief Administrative Patent Judqe, with whom Jerry Smith,
MacDonald and Nappi, Administrative Patent Judqes, join, concurring.

Appeal No. 2005-0841
Application No. 081230,083
A. 	lntroduction3
7. 	On February 22, 2006, this Board entered a decision (Decision I)
affirming the Examiner's rejection of claims 14 and 16.
8. 	In Decision I, with respect to claim 14, a 6 to 5 majority of the panel
affirmed the decision of the Examiner. With respect to claim 16, the panel unanimously
affirmed the decision of the Examiner.
9. 	Appellant filed a Brief in Response (Br. in Res.) to Decision I on
April 27,2006.
10. 	Pursuant to options offered by the Board in Decision I (p. 43),
Appellant elected (Br. in Res. at p. 1) to treat Decision I of this Board as a non-final
decision (Option 3 of Decision I at p. 44).
B. 	Findings of fact
Appellant references and agrees (Br. in Res. at pp. 2-3) with this Board's
Findings of Fact 1-58 (Decision I at pp. 3-14). Appellant restates and agrees (Br. in
Res. at p. 3) with the language of this Board's Finding of Fact 59 (Decision I at p. 14).
In addition to Findings 1-59 of Decision I, the following findings of fact are
believed to be supported by a preponderance of the evidence.
The paragraph numbering within the Introduction, Findings of Fact, and Discussion contained herein
follow sequentially from the last number of the same section in Decision I.
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Application No. 081230,083
60. 	Claim 14 is directed to the second embodiment (Finding of Fact 22)
shown in Figs. 1 and 6-8 (U.S. Patent 5,105,731 at col. 4, lines 31-42).
61. 	The "first springy tongue spaced from the surrounding wail" of
claim 14 is shown as springy tongue 22, pocket like zone 23 (i.e. a space), and
surrounding wall 21 of Fig. 6.
62. 	Claim 16 is directed to the first embodiment (Finding of Fact 18)
shown in Figs. 9-1 1 (col. 5, lines 16-35).
63. 	The "resilient clip connection formed separate from the outer
housing" of claim 16 is shown as tongue 22' and surrounding wall 21 of Fig. 9.
C. 	Discussion
1. 	Recapture principles
We incorporate by reference our discussion of recapture principles in Decision I
(pp. 14-33) and supplement that discussion infra.
(1 3)
Reissue recapture is not a per se rule
Appellant argues (Br. in Res. at p. 8) "[tlhe Board has taken a per se rule of
reissue recapture to prevent applicant from retreating to any claim limitation determined
to have secured allowance of the original patent." Quite the contrary is true. No per se
rule was adopted. As pointed out at page 22 of Decision I, "the Clement steps should
not be viewed as per se rules." 	Rather, "[tlhe [Elxaminer can make out a prima facie
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Application No. 081230,083
case of recapture by establishing that the claims sought to be reissued fall within
Substeps ( I ) or 3(a) of Clement" and "once a prima facie case of recapture is
established, the burden of persuasion then shifts to the applicant to establish that the
prosecution history of the application which matured into the patent sought to be
reissued establishes that a surrender of subject matter did not occur." (Decision I at pp.
23-24) This rebuttable presumption is the antithesis of a per se rule.
Appellant also argues (Br. in Res. at p. 8) that at most "[his] decision not to
appeal the Examiner's original rejection of claims 1 and 3-1 1 [as filed,] but to amend the
allowable claims into independent form may be considered to constitute an irrevocable
admission that claims of the scope of claims 1 and 3-1 1 [as filed] are unpatentable."
Appellant's point being that originally filed claims, which were then cancelled, can be
viewed as being surrendered.
Such an irrevocable admission with respect to Appellant's decision not to appeal
the Examiner's rejection of originally filed claims 1 and 3-1 1 is not before us in this
appeal because Appellant has not sought to recapture in this reissue the originally filed
claims he cancelled during prosecution of the original application. However, we do note
that whether an admission is "irrevocable" or merely creates a "rebuttable presumption"
is an open question given our discussion at pages 22-31 of Decision I.

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Application No. 081230,083
Appellant's view of surrender
Appellant argues (Br. in Res. at pp. 8-10) there is no reissue case under
35 U.S.C. § 251 in which a court has supported this Board's view of surrender. Rather,
Appellant argues the courts support his view that only original patent application claims
1, 3-5, and 7-1 1 are surrendered subject matter. However, Appellant does not favor us
with his views of the impact of principles announced in "doctrine of equivalents" cases
on surrender in reissue recapture. 	We are of the view that "doctrine of equivalents"
cases, particularly Festo I, Festo Ill and Festo Ill (Decision I at p. 25), are applicable to
surrender in reissue recapture (Decision I pp. 22-31). 	Appellant presents no argument
that dissuades us from that view.
(15)
Yamasuchi
Appellant argues (Br. in Res. at pp. 10-12) his position is similar to the situation
in Ex parte Yamaquchi, 61 USPQ2d 1043 (Bd. Pat. App.& Int. 2001),.which is a reissue
recapture precedent binding on this Board. 	Appellant himself notes (Br. in Res. at pp.
11-12) the Board in Yamacluchi took the position that "The prosecution history of
[Yamaguchi's] original application . . . contains neither any amendments to the claims,
nor any arguments made by appellants to overcome prior art or for any other purpose."
61 USPQ2d at 1046. We have already fully addressed and rejected Appellant's
argument that he did not make an amendment (Decision I at pp. 37-41). We disagree
with Appellant's premise that there has been no amendment. Given the presence of an
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amendment by applicant during prosecution, we conclude Yamaquchi is inapplicable to
the situation before us. Further, Appellant presents no convincing explanation why
Yamaquchi would be applicable in the presence of such an amendment.
2. 	The Examiner's prima facie case
We incorporate by reference our discussion of the Examiner's prima facie case in
Decision I (pp. 33-35) and modify that discussion only as noted infra.
Our findings of fact 55-58 (Decision I at pages 12-14) set out the basis upon
which the Examiner made a recapture rejection. As noted in Finding 59 (Decision I at
page 14), the record supports the Examiner's finding^.^
3. 	A~plicant'sresponse to the Examiner's case
We incorporate by reference our discussion of Applicant's response in Decision I
(pp. 35-43) and supplement that discussion infra.
/4) Argument as to the prima facie case.
Appellant argues (Br. in Res. at pp. 12-13) that "the Examiner has not made a
prima facie case of recapture." Quite the contrary is true as this Board pointed out at
pages 33-35 of Decision I. As we concluded at page 35, "[tlhe Examiner's accurate
factual analysis demonstrates that the Examiner has made out a prima facie case of
recapture."
4 It is Finding of Fact 59, which notes that the record supports the Examiner's findings rather than
Finding 58 as stated by this Board at page 33 of Decision I.
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Further, given this prima facie case the Appellant was invited at Option 3
(Decision I at page 44) to provide a rebuttal to the presumption of surrender based "(1)
on the record, as it exists at this time, and (2) any public document not in the record at
the present time, provided the document was available to the public at the time an
amendment was made." Appellant elected-Option3 (Br. in Res. at p. I ) , but has not
favored us with any such rebuttal evidence.
(5) Argument as to the view of one skilled in the art
Appellant argues (Br. in Res. at pp. 13-14) that:
1) "one of ordinary skill in the art would likelv view . ..";
2) "one of ordinary skill in the art would not necessarily place ...";
3) "one of ordinary skill in the art would not necessarily be inclined to place . ..";and
4) "one of ordinary skill in the art might look ..." (emphasis added).
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. As we noted above, Appellant was invited to provide rebuttal
evidence and has not favored us with any such evidence.
Appellant also argues again at page 14 that "it is clear from the record that
applicants never amended [originally filed claim 121 but, rather, simply presented a new
independent claim 16 including all the limitations of [allowable] claim 12 as filed together
with base claim 1 and intervening claims 10 and 11." We agree Appellant did what he
says he did, but we do not agree that what he did is not an amendment. When
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presented with a similar situation Honevwell (Decision I at p. 38), our reviewing court
held such a change to be an amendment involving "surrender" in the context of the
doctrine of equivalents. Appellant has not favored us with any reason why we should
not follow the Honevwell principles with respect to "surrender" in the context of reissue
recapture.
16) Repeated arguments
Appellant's Brief in Response at pages 14-17 and 19-21 merely repeats verbatim
the arguments found at pages 10-13 and 15-17 of Appellant's Reply Brief of September
28, 2004. We have already fully addressed and rejected those arguments at pages
35-43 of Decision I.
17) Eqqert arguments
Appellant's Brief in Response at pages 17-19 and 21-22 argues that reissue
claim 14 and reissue claim 16 do "not violate the Recapture Doctrine according to the
Eaaert analysis." 	We have already fully addressed those arguments at pages 19-21 of
Decision I. We reiterate:
It is believed that the Substep (3)(a) rationale of the Eggert majority ( I ) is
not consistent with the rationale of the Federal Circuit in North American
Container and (2) should no longer be followed or be applicable to
proceedings before the USPTO.
Decision I at page 21.

Appeal No. 2005-0841
Application No. 081230,083
D. 	Decision
Upon consideration of the record, and for the reasons given herein and in the
opinion in support of Decision I, the decision of the Examiner rejecting reissue claims 14
and 16 based on recapture is affirmed.
E. 	Options for further proceedings:
1. 	Option 1: Applicant can accept our decision, in which case the
appeal would be concluded.
2. 	Option 2: Within two (2) months of the date of this decision,
applicant may file a request for rehearing. 37 CFR § 41.52(a)(l) (2005).
3. 	Option 3: Applicant may treat our decision as a final decision and
seek judicial review within the time set out in 37 CFR 5 1.304(a)(l) (2005).
F. 	Non-extendable period for response
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a) (2005).

Appeal No. 2005-0841
Application No. 081230,083
AFFIRMED
&$faChief
Administrative patent-~udge 	1
Administrative Patent Judge 	/-I 	) 	BOARD OF PATENT
& k g / d d APPEALS AND
ALLEN R. MacDONALD 	) 	INTERFERENCES
Administrative Patent Judge
)
2z%z )
1
Administrative Patent Judge

Appeal No. 2005-0841
Application No. 081230,083
Judge Gross, with whom Judge Ruggiero joins, concurring.
We incorporate by reference our discussion of recapture principles, the relevant
case law, and its application to reissue claims 14 and 16 in Decision I (pages 46-69).
We supplement that discussion, infra.
Appellant argues (Brief in Response, pages 8-10) that surrendered subject
matter has been determined to be "either ( I ) the rejected claim to be deliberately
canceled or amended in an effort to overcome a prior art rejection . . . ; or (2) the argued
claim minus the argued limitations when surrender occurs through arguments alone.''
Appellant further asserts (Brief in Response, page 9) that there are no reissue cases
wherein it has been determined that surrendered subject matter includes the territory
falling between a rejected claim and an amended allowable claim. However, appellant
fails to acknowledge or comment upon the analysis in our concurring opinion of
Decision I at pages 47-61 of the reissue cases decided by the Federal Circuit. As
summarized at page 61 of Decision I, we find that according to the Federal Circuit,
surrendered subject matter included any claim that lacks a limitation directed to the
specific subject matter added in the original prosecution to overcome a prior art
rejection.
Regarding Ex Parte Yamaquchi, the facts of the instant case differ therefrom so
as to render Yamaquchi inapplicable. Specifically, as pointed out by appellant (Brief

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in Response, pages 10-12), the examiner in Yamasuchi allowed the claims in the first
office action with no action by the applicant. Further, the reasons for allowance
paraphrased the entire claim rather than specifying any particular limitation that was
lacking from the prior art. In contrast, in the present situation, the examiner indicated
that the limitations of original claims 2 and 12 were absent from the prior art, and
appellant amended all of the claims (by substituting new independent claims for
claims 1 a-ncl II ) to include those limitations. Thus, appellant's action indicates
reliance upon specific limitations to overcome a prior art rejection in the original
prosecution. Accordingly, the prosecution history provides evidence relevant to
surrender as it includes an amendment to the claims to overcome a prior art rejection.
Appellant (Brief in Response, pages 14-22) analyzes reissue claims 14 and 16
using Ex Parte Eggert. However, as explained at pages 60-61 of Decision I, we find
that Egnert is no longer consistent with the rationale of the Federal Circuit and should
no longer be followed. Instead, as indicated at pages 46-61 of Decision I, claims
should be analyzed using In re Clement as interpreted in light of Hester, Pannu,
and North American Container. See our analysis of reissue claims 14 and 16 at
pages 62-68 of Decision I, wherein we found that appellant has attempted to
recapture surrendered subject matter in each of reissue claims 14 and 16. Nothing in

Appeal No. 2005-0841
Application No. 081230,083
the Brief in Response convinces us of any error in our analysis and conclusion.
Accordingly, the rejection of reissue claims 14 and 16 should be affirmed.
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Administrative Patent ~ u d g e 	) 	BOARD OF PATENT
)
&J&/L-y.& 	) 	APPEALSAND
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ANITA PELLMAN GROSS 	) 	INTERFERENCES
Administrative Patent Judge 	1

Appeal No. 2005-0841
Application No. 081230,083
Judge Garris, with whom Judges Delmendo and Franklin join, concurring-in-part and
dissenting-in-part.
We adhere to our opinion, which we incorporate herein by reference,
expressed in Decision I (pages 70-101) wherein we set forth our rationale in favor of
reversing the rejection of claim 14 and affirming the rejection of claim 16 under 35
U.S.C. § 251.
The Appellant's Brief in Response to this Decision contains arguments that this
expanded panel of the Board committed error in affirming the rejection of claim 16.
Because these arguments are fully rebutted in the record of this appeal, we shall not
reiterate the rebuttals here. It follows that, for reasons of record, we remain
unpersuaded by the Appellant's contentions that the claim 16 rejection is in error.
For the reasons expressed in our Decision 1 opinion, we also remain convinced
that the majority has erred in determining that the § 251 rejection of claim 14 should
be affirmed. In reaching this determination, the majority has concluded that it is no
longer proper under any circumstances to define surrendered subject matter
appertaining to the recapture rule in terms of a claim which has been cancelled or
amended in order to avoid a rejection. Instead, it is the majority's view that
surrendered subject matter must now be defined under all circumstances as including
any claim which lacks a limitation added or argued by an applicant in order to avoid a
rejection. As phrased by the plurality opinion,

Appeal No. 2005-0841
Application No. 081230,083
the "surrendered subject matter" that may not be recaptured
through reissue should be presumed to include subject matter
broader than the patent claims in a manner directly related to
(1) limitations added to the claims by amendment (either by
amending an existing claim or canceling a claim and replacing it
with a new claim with that limitation) to overcome a patentability
rejection and (2) limitations argued to overcome a patentability
rejection without amendment of a claim [Decision I, pages 27-28;
emphasis deleted].	. 	.
As expressed somewhat differently in the concurring opinion, "the proper
interpretation of the applicable and binding case law is that surrendered subject matter
includes any claim that lacks a limitation directed to the specific subject matter that
was added to overcome a prior art rejection" (id.at page 61).
The majority's position regarding surrendered subject matter is erroneous.
As fully explained in our Decision I opinion including the appendices thereof,
binding precedent includes numerous decisions which defined surrendered subject
matter in terms of a claim that had been canceled or amended to avoid a rejection.
For example, see In re Clement, 131 F.3d 1464,45 USPQ2d 1161 (Fed. Cir. 1997);
Ball Corp. v. United States, 729 F.2d 1429, 221 USPQ 289 (Fed. Cir. 1984); In re
Richman, 409 F.2d 269, 161 USPQ 359 (CCPA 1969); In re Bvers, 230 F.2d 451, 109
USPQ 53 (CCPA 1956); In re Wadsworth, 107 F.2d 596,43 USPQ 460 (CCPA 1939).
The majority has contradicted this binding precedent in taking the position that such a
definition is no longer proper under any circumstances.

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Application No. 081230,083
It is clear that the definition of surrendered subject matter espoused by the
majority would be proper under appropriate factual circumstances. For example, see
Hester Indus., Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir.), &
denied, 525 U.S. 947 (1998). However, the majority has erred in contending that such a
definition is proper under &I circumstances. This error is revealed by the unacceptable
consequences of the majority's decision to affirm the § 251 rejection of claim 14.
A discussion of these consequences follows.
We begin with the established legal principles that the recapture rule is
analogous to prosecution history estoppel (id,, 142 F.3d at 1481-82,46 USPQ2d at
1649) and that actions-or statements made during prosecution must be clear and
unmistakable to establish disavowal or surrender of subject matter under either the
recapture rule (id.) or prosecution history estoppel (Omega Eng'n., Inc. v. Ravtek Corp.,
334 F.3d 1314, 1325-26, 67 USPQ2d 132, 1329 (Fed. Cir. 2003)). The prosecution
history involved in this appeal does not include any actions or statements which, as in
North American Container, Inc., v. Plastipak Packaging, Inc., 415 F.3d 1335, 1349,-50,
75 USPQ2d 1545, 1556-57 (Fed. Cir. 2005) or Hester, clearly and unmistakably
surrender the subject matter upon which is based the majority's recapture
determination. On the contrary, this prosecution history contains clear and
unmistakable evidence in the form of patent claim 11 that the subject matter in question
has not been surrendered as more fully explained in our Decision I opinion (e.g., see

Appeal No. 2005-0841
Application No. 081230,083
page 73). Significantly, neither the plurality opinion nor the concurring opinion
addresses this deficiency of the majority decision.
In addition, the majority's affirmance of the claim 14 rejection violates the
Appellant's statutory rights under 35 U.S.C. § 251. At pages 72 and 94-96 of Decision I,
we previously explained that claim 14 includes a narrowing aspect directed to an
expressly disclosed embodiment of the invention which had never before been claimed.
In this regard, claim 14 includes a material narrowing relative to an overlooked aspect of
the invention. For this reason claim 14 avoids the recapture rule under any definition of
surrender because it is "materially narrower in other overlooked aspects of the
invention" and thereby provides the Appellant with "a scope of protection to which he is
rightfully entitled for such overlooked aspects" (Hester, 	142 F.3d at 1482-83, 46
USPQ2d at 1650). Again, neither the plurality opinion nor the concurring opinion
addresses this deficiency of the majority decision to affirm the claim 14 rejection.
The plurality opinion is also defective in applying to the recapture rule the policy
considerations which attend surrendered subject matter via prosecution history estoppel
as discussed in Festo Corp. v. Shoketsu Kinzoku Koqvo Kabushiki Co., 	535 U.S. 722
(2002). According to the plurality "[tlhe same policy considerations that prevent a
patentee from urging equivalents within what the Supreme Court refers to as
'surrendered territory' should prima facie prohibit the patentee from being able to claim
subject matter within the surrendered territory in reissue" (Decision I, page 27).

Appeal No. 2005-0841
Application No. 081230,083
Contrary to the plurality's belief, however, the policy considerations relating to
prosecution history estoppel vis-a-vis the doctrine of equivalents are not coincident
with the policy considerations relating to the recapture rule vis-a-vis reissue. See Ball,
729 F.2d at 1439 n.29, 221 USPQ at 296-97 n.29. For example, by extending
protection beyond the literal terms in a patent, the doctrine of equivalents can create
substantial uncertainty about where the patent monopoly ends, and, to reduce this
uncertainty, the public may rely on the prosecution history of the patent proceedings.
Festo, 535 U.S. at 727. On the other hand, this uncertainty is not present in the
context of reissue since the original patent is surrendered in favor of the reissue
patent which contains a new public record of prosecution history. 35 U.S.C. 5 251.
The majority's definition of surrendered subject matter has certain desirable
attributes such as uniformity and simplicity of application. Because of these attributes,
this definition provides the Patent and Trademark Office with an exceedingly low
hurdle for establishing a prima facie case of recapture. Regardless, this definition is
fatally erroneous in that it is contrary to the binding precedent of our past and present
reviewing courts and is contrary to a reissue applicant's right under 35 U.S.C. § 251 to
enlarged claim scope.

Appeal No. 2005-0841
Application No. 081230,083
For the reasons set forth above and in our opinion at pages 70-101 of
Decision I, we would reverse the rejection of claim 14 and affirm the rejection of
claim 16 under 35 U.S.C. § 251.
BOARD OF PATENT
Administrative Patent Judge 	APPEALS AND
) 	INTERFERENCES
.A . 8Ao&j9
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1
BEVERLY A. FRANKLIN 	1
Administrative Patent Judge 	)

Appeal No. 2005-0841
Application No. 081230,083
Judge McQuade, concurring-in-part; dissenting-in-part.
I remain of the view, for the reasons set forth in the decision mailed February 22,
2006 (see pages 102-105), that the 35 U.S.C. § 251 rejection should be reversed with
respect to claim 14 and affirmed with respect to claim 16.
In the brief filed April 27, 2006, the appellant continues to argue that the rejection
of claim 16 is unsound, essentially because:
a) "[rleissue claim 16 is in no way broader that the surrendered subject matter
[original applications claims 1, 10, and II ] " (page 20);
b) "[elach and every limitation of the surrendered subject matter finds a
corresponding limitation in reissue claim 16" (page 20); and
c) "reissue claim 16 has been narrowed relative to the surrendered subject
matter in that it includes the limitation of 'the clip connection securing the outer housing
to the locking element and joining the inner fIr]ame, the outer housing, and the check
valve element to the motor vehicle"' (page 21).
The appellant's first two points regarding the alleged lack of any broadening in
reissue claim 16 relative to original application claim 11 are not well taken.
Original application claim 11, which admittedly embodies surrendered subject
matter, recites via its dependency from original application claim 10 that that the clip
connection of the claimed check valve assembly comprises "a springy tongue." Reissue
claim 16 contains no such limitation.

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Application No. 081230,083
Hence, the appellant's position that reissue claim 16 is in no way broader than
the surrendered subject matter as embodied by original application claim 11 and that
each and every limitation of this surrendered subject matter finds correspondence in
claim 16 is without merit.
The appellant's third point asserting a narrowed aspect of claim 16 as compared
to original application claim 11 is well founded but of no moment with respect to the
recapture analysis.
More particularly, reissue claim 16 is narrower than original application claim 11
in that it calls for the clip connection to secure the outer housing to the locking element.
In contrast, original application claim 11 fails to specify how the locking element and
housing element are connected. The underlying disclosure, however, does not attribute
much importance to the manner in which this connection is effected. In this regard, the
specification merely states that the locking element 30 "canbe connected with the outer
housing 3" (column 5, lines 21 and 22, emphasis added), and that the locking element
"walso have a gripping edge 33 [shown in Figures 9-11 as part of the clip connection
or springy tongue 22'1 to engage behind a stop surface 32 of the outer housing 3"
(column 5, lines 26-28, emphasis added).
Consequently, while claim 16 is narrower than original application claim 11 in the
aspect noted by the appellant, the narrowing is relatively minor as compared to the
broadened aspect of the claim.

Appeal No. 2005-0841
Application No. 081230,083
In summary, and as stated in the earlier decision, "claim 16 would allow the
appellant to regain through reissue subject matter that was surrendered to obtain the
patent" (page 105).
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Appeal No. 2005-0841
Application No. 081230,083
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