Appeal No. 96-3702
Application 08/208,688
Claims 1 through 21 stand rejected under 35 U.S.C. § 251 as
lacking statutory basis for reissue. According to the examiner,
[t]he statutory requirement of 35 U.S.C. § 251 does not
authorize reissue of a patent unless the patent is
deemed wholly or partially inoperative or invalid due
to errors without deceptive intent. In this case, the
patent is not deemed wholly or partially invalid or
inoperative due to such errors because, based on the
facts of record, claiming an “adjusting means”
[appealed claim 14] or a “mandrel spreader” [appealed
claim 21] has the same effect and/or scope as claiming
a “tapered adjusting means” [patent claim 14],
therefore there is no error. The courts have
determined in In re Donaldson, 29 USPQ 2d 1845, 1850
(Fed Cir. 1994) that a means-plus-function limitation,
under 35 U.S.C. §112 6th paragraph, is limited to
corresponding structure, material or acts described in
the specification and equivalents thereof. In this
case, the tapered adjusting means, as patented,
corresponds to the inverted truncated cone 58 as shown
in figure 5 and described in the specification (column
6, lines 40 et seq.). This “adjusting means” has only
been disclosed in the specification as such an inverted
truncated cone 58, which can only be described as being
“tapered” in shape. An adjusting means that does not
have a tapered surface, as described by Applicant in
the re-issue declaration, is not considered an art
recognized, or structural, equivalent. Thus, a
“tapered adjusting means” or an “adjusting means” or a
“mandrel spreader”, in light of Donaldson and
Applicant’s specification, have the same scope.
Therefore, there is no error which would justify
reissue [answer, Paper No. 17, pages 4 and 5].
Claim 21 also stands rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which the appellant
regards as the invention. Here, the examiner contends that “[i]n
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