Appeal No. 1999-0323 Page 6
Application No. 08/079,504
995-96, 27 USPQ2d at 1524-25; Ball Corp. v. United States, 729
F.2d 1429, 1436, 221 USPQ 289, 294-95 (Fed. Cir. 1984).
The examiner determined (final rejection, p. 3) that
claims 43 and 44 were not being proper claims in this reissue
application
in that they attempt to recapture subject matter
cancelled in order to have the original application
allowed. The language of claim 43 that the position
sensitive detector has "an area sufficiently small to
keep the capacitance down so that the speed is up" is
apparently an attempt to recapture subject matter
prosecuted in and cancelled from the application which
matured into the original patent in order to obtain
allowance of that application. See MPEP 1412.02. Note
also the definition of "broader" for the purposes of
reissue applications in MPEP 1412.03; no claim is proper
in a reissue application if that claim is broader in any
respect than any claim cancelled to obtain allowance of
the original patent.
The examiner also determined (advisory action, p. 2-3)
that
[t]here were claims in the parent application that
claimed "small", and the claims were amended to remove
"small" and replace it with a narrower term in order to
obtain allowance of that parent application. Thus
applicant is estopped from obtaining claims limited to
the photodetector being "small". The remarks filed 25
July 1997 argue that the claims are narrower because they
have the "limitation" "sufficiently small to keep the
capacitance down so the speed is up" rather than merely
claiming "small". However, these extra words are
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007