Appeal No. 98-0532
Application 07/996,382
Our understanding of the issue in this case is that
claims 37 through 56 stand rejected as not being in compliance
with 35 U.S.C. § 251 because they are not directed to an
invention that is separate and distinct from that which is set
forth in the reissue patent (Answer, pages 2 and 3). The
appellant argues in rebuttal that the examiner has
misconstrued the language and the intent of Section 251, and
urges that a second reissue patent based upon an application
that is a continuation of the first reissue application is not
prohibited.
It is the examiner’s position that although the second
paragraph of 35 U.S.C. § 251 grants the Commissioner of
Patents and Trademarks the discretion to issue several reissue
patents under certain circumstances, this is limited in that
multiple reissue patents can only be issued on 2
“separate and distinct parts of the thing patented”
(Answer, page 6, underlining added).
That is, additional reissue applications are permitted only in
the case of what normally would be the subject of divisional
applications.
2"Only” does not appear in the statute; it is a product of
the examiner’s interpretation thereof.
3
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