Appeal No. 2001-1596
Application 09/296,102
paragraph 7 of the new reissue declaration (filed Jan. 4, 2000)
that this language “was erroneously included in claim 1 [and] was
not necessary either for a complete definition of our invention
or for distinguishing the prior art.” Thus, the application
seeks to enlarge the scope of claims 1 to 14 of the patent, and
was properly filed within two years from the grant of the patent,
as provided by the fourth paragraph of 35 U.S.C. § 251. However,
the examiner considers claims 1 to 14 to be unpatentable under
§ 251 because they are “an improper recapture of broadened
claimed subject matter surrendered in the application for the
patent upon which the present reissue is based” (answer, page 3).
Specifically, the examiner takes the position that (answer, pages
3 to 4):
The record of the application for the patent shows that the
broadening aspect (in the reissue) relates to subject matter
that applicant previously surrendered during the prosecution
of the application. Accordingly, the narrow scope of the
claims in the patent was not an error within the meaning of
35 U.S.C. § 251, and the broader scope surrendered in the
application for the patent cannot be recaptured by the
filing of the present reissue application.
The patent claims 1-14 were allowed on the basis of
Examiner’s Statement of Reason(s) for Allowance, . . .
[quoted supra].
Claim 1, as presented in this reissue application,
seeks to broaden the coverage by the removal of the
limitation of, “the third axis [is] disposed inside [of]
a triangle defined by the first, second and fourth axes
viewed on end.”
Since applicant did not present on the record a counter
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