Ex Parte Aleles et al - Page 8



             Appeal No. 2006-2248                                                                               
             Application No. 10/158,618                                                                         

             patent claim 1.  However, they are not identical and no disclosed composition                      
             corresponds to the patent claim. 2                                                                 



                                Prosecution history of the original application                                 
                          16. As noted earlier, the patent sought to be reissued was based on                   
             application 08/940,880, filed September 30, 1997 ("original application").                         
                          17. As filed, the original application contained claims 1-10                          
             (reproduced in Appendix 1 of this opinion).  Only claim 1 is independent.                          
                          18. Original independent application claim 1 recites three (3)                        
             components of the claimed composition and no specific % w/w for the components                     
             with all three components being recited as a genus of chemical compounds.                          
             Dependent claims 2-5 and 9 limit the genus to a recited group of chemical                          
             compounds.  Dependent claims 6-8 and 10 limit the genus to one specific chemical                   
             compound.                                                                                          
                          19. On June 22, 1999, the Examiner entered a first Office action.                     
                                                                                                               
             2 We note that patent claim 1 (the claim 1 currently on appeal) is NOT identical to                
             allowed claim 11, and neither are identical to Example 11 of the specification.                    
             There appear to be both transcription and printing errors which are not corrected by               
             this reissue.  The % w/w of the last 3-4 compounds in Example 11 of the original                   
             application specification should be carefully compared to patent claim 1.                          
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