Appeal No. 98-0541
Application 08/409,137
exchanger without traverse and the patent subsequently issued
claiming only a modular heat exchanger. A divisional
application was not filed to prosecute claims directed to the
rotary heat exchanger.
In this reissue application on appeal, appellant
presented claims 1-58. Claims 1-12, 15-20, 24-25, 27, 29-45,
47 and 49-58 have been allowed by the examiner (examiner's
answer, page 3, lines 1-2). Allowed claim 12 is generic to
rotary and the modular heat exchangers. Claims 13-14, 21-23,
26, 28, 46 and 48 depend from claim 12 and are limited to
rotary heat exchangers. The examiner has rejected claims
13-14, 21-23, 26, 28, 46 and 48 on the basis that appellant is
attempting to recapture by reissue the non-elected invention
said to have been "surrendered" in the application which
matured into the patent, namely, the rotary heat exchanger.
B. Discussion
In support of his recapture rejection, the examiner
relies on In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed.
Cir. 1990). However, the facts here differ from those in
Watkinson and other similar cases, such as In re Orita, 550
F.2d 1277, 193 USPQ 145 (CCPA 1977). A generic claim was not
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