Appeal No. 1998-0812 Page 8
Application No. 08/378,954
appellant's own disclosure. The use of such hindsight
knowledge to support an obviousness rejection under 35 U.S.C.
§ 103 is, of course, impermissible. See, for example, W. L.
Gore and Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553,
220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S.
851 (1984).
For the reasons set forth above, the decision of the
examiner to reject claims 10 to 13 under 35 U.S.C. § 103 is
reversed.
REMAND
The application is being remanded to the examiner for
consideration of whether or not a rejection of claims 10 to 13
under 35 U.S.C. § 251 as being an improper "recapture" of subject
matter that was surrendered in an effort to obtain allowance of the
original patent claims is appropriate in this application.
An attorney's failure to appreciate the full scope of the
invention qualifies as an error under 35 U.S.C. § 251 and is
correctable by reissue. In re Wilder, 736 F.2d 1516, 1519, 222 USPQ
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