Appeal No. 2001-0323 Page 7
Application No. 09/159,360
U.S.C. § 251 means the patent upon which reissue is being
sought (in this case U.S. Patent No. 5,557,844) not the first
patent issued on the underlying disclosure. Since the filing
date of the reissue application (i.e., September 23, 1998) is
within two years of the issue date (i.e., September 24, 1996)
of U.S. Patent No. 5,557,844, the appellants have meet the
requirements of the fourth paragraph of 35 U.S.C. § 251
enabling the appellants to enlarge the scope of the claims of
the original patent (i.e., U.S. Patent No. 5,557,844).
With respect to the requirements of the first paragraph
of 35 U.S.C. § 251, it is clear to us that the record
establishes that claims directed to the printed circuit board
were erroneously canceled from divisional Application No.
08/463,344. Thus, a rejection of claims 2 to 11 and 13 to 24
under the first paragraph of 35 U.S.C. § 251 is not
appropriate under the facts of this case.1
1The appellants have offered to file a terminal
disclaimer (brief, p. 13). We believe that a terminal
disclaimer is necessary under the facts of this case in order
to prevent or overcome obviousness-type double patenting
between claims 20 to 24 in this reissue application and claims
(continued...)
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