How can a reissue applicant rebut a recapture rejection?
A reissue applicant can rebut a recapture rejection by demonstrating that the reissue claims include limitations that materially narrow the claims in a way related to the surrendered subject matter. According to MPEP 1412.02:
“The reissue applicant may rebut a recapture rejection by demonstrating that a claim rejected for recapture includes one or more claim limitations that ‘materially narrow’ the reissue claims in a way that relates to the subject matter surrendered during original prosecution.”
To rebut a recapture rejection, the applicant should:
- Identify the specific limitation(s) added to the claims
- Explain how the added limitation(s) materially narrow the claims
- Demonstrate how the narrowing relates to the surrendered subject matter
It’s important to note that the narrowing must be more than just adding a limitation that is well-known in the prior art.
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