Appeal No. 99-0629 Page 17
Application No. 08/778,059
surrendered particular subject matter, the PTO must look to
the prosecution history for arguments and changes to the
claims made in an effort to overcome a prior art rejection.
See Mentor, 998 F.2d at 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).
With this as background, we remand the application to the
examiner to consider, on the record, whether reissue claims 17
through 27 attempt to regain through reissue subject matter
surrendered during prosecution of Application No. 08/027,623
in Paper No. 12 therein, in an effort to overcome a prior art
rejection. We direct the examiner's attention particularly to
the following items in the record of Application NO.
08/027,623: (1) claim 9 as presented prior to the filing of
Paper No. 12, (2) the amendments made in Paper No. 12 and (3)
the appellant's remarks bridging pages 7 and 8 of Paper No.
12.
(2) Prior Art Multiple-Barrel Projectile Devices
We also remand the application to the examiner to
consider the patentability of the reissue claims, most notably
claims 17 through 22, 24 and 26, over Breneman (alone, or in
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