Appeal No. 98-0673
Application 08/723,355
application must be for the same invention as that "disclosed"
in the original patent. 35 U.S.C. § 251.
On the issue of the "same invention" rejection under
35 U.S.C. § 251, the controlling authority is the Federal
Circuit’s decision in In re Amos, 953 F.2d 613, 21 USPQ2d 1271
(Fed. Cir. 1991). The mere absence of an objective "intent to
claim" is not dispositive on the "same invention" question
under 35 U.S.C. § 251, and lack of an intent to claim is not
an independent basis for denying a reissue application under
35 U.S.C. § 251. In re Amos, 953 F.2d at 618-19, 21 USPQ2d at
1275-1276. The key is whether the disclosure of the original
patent is sufficient such that the applicant could have
claimed the subject matter now claimed, in the original
application for patent. In re Amos, 953 F.2d at 618, 21
USPQ2d at 1275. As is stated in In re Amos, 953 F.2d at 618,
21 USPQ2d at 1274:
Hence, the purpose of the rubric "intent to
claim" is to ask the same question as to whether
"new matter" has been "introduced into the
application for reissue" thus, perforce, indicating
that the new claims are not drawn to the same
invention that was originally disclosed.
The examiner has failed to demonstrate any reason or
basis to find that claims 6-11 add new matter to or are
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