Appeal No. 98-0541
Application 08/409,137
presented in the application which matured into the Watkinson
patent. Instead, in seeking reissue, Watkinson filed claims
corresponding solely to the non-elected invention which had
not been prosecuted in the application which matured into the
Watkinson patent. In the present reissue application,
appellant--unlike Watkinson and Orita--has presented a generic
claim which the examiner has found to be supported by the
specification and subsequently allowed. In presenting generic
claim 12 in the reissue application on appeal, appellant took
a step which he could have taken during prosecution of the
application which matured into the patent. On the record
before us, the examiner has not questioned that appellant
erred, within the meaning of the reissue statute, when he
failed to present claim 12 in the application which matured
into the patent.
Following oral hearing in this appeal, we became
concerned as to whether the subject matter of claim 12 was
described in the specification of the patent in the manner
required by the first paragraph of 35 U.S.C. § 112. We asked
appellant to address our concern and he has done so in a
timely fashion. Upon consideration of appellant's response,
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