Appeal No. 2000-0132
Application No. 08/934,791
claims cover “statutorily different” subject matter which have
not been formally restricted or cancelled in the appellants’
original application.
The examiner also takes the position that 35 U.S.C. § 251
does not authorize reissuance of U.S. Patent No. 4,818,394
through the present reissue application since upon issuance of
the first reissue application as U.S. Patent No. Re 34,457, the
surrender of U.S. Patent 4,818,394, by operation of law, took
effect. We cannot subscribe to the examiner’s position.
In reference to our decision in Ex part Graff, No. 95-1307
(Bd. Pat. App. & Int. Mar. 7, 1996) involving the same issue, our
reviewing court in In re Graff, 111 F.3d 874, 876, 42 USPQ2d
1471, 1473 (Fed. Cir. 1997) stated that:
The Board held that 35 U.S.C. § 251 does not
authorize reissuance of the surrendered ‘928 patent
through Mr. Graff’s second reissue application.
However, § 251 does not bar multiple reissue patents in
appropriate circumstances. Section 251[3] provides
that the general rules for patent applications apply to
reissue applications, and § 251[2] expressly recognizes
that there may be more than one reissue patent for
distinct and separate parts of the thing patented. The
statute does not prohibit divisional or continuation
reissue applications, and does not place stricter
limitations on such applications when they are
presented by reissue, provided of course that the
statutory requirements specific to reissue applications
are met.
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