Appeal No. 2005-2750
Application 09/460,221
correct, the rejection for reissue recapture must be reversed on that ground, making it
unnecessary to consider the first and third steps of the Pannu analysis.
In Wesseler, all of the claims of the application which ultimately issued as the
original patent had been finally rejected as “being vague and indefinite.” 367 F.2d at
845, 151 USPQ at 344. In addition, some of the claims had been rejected as
unpatentable over a patent to Simmonds. Id. Following a personal interview between
Wesseler’s counsel and the primary examiner,4 the application was amended by
cancelling all of the pending claims in favor of newly added claims 25-27, which became
claims 1-3 of the issued patent (2,939,664). The new claims each recited at least one
feature (e.g., an offset ear in claim 25) which did not appear in the canceled claims.
The remarks which accompanied the amendment read in pertinent part as follows:
In an effort to expedite prosecution of this case and bring it to a
close, this amendment after final rejection is presented for the examiner's
further consideration. Applicant has herein attempted to follow completely
the procedures and suggestions presented by the Primary Examiner
insofar as they were understood. Accordingly, three new claims have
been herein presented. Claim 25 is believed to be generic, and Claims 26
and 27 are believed to be species contemplated by said generic claim.
[Emphasis added.]
4 The court noted that the patent file did not contain a paper recording the
suggestions made by the primary examiner during the interview. 367 F.2d at 846, 151
USPQ at 345.
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