Appeal No. 1998-0212 Page 22
Reissue Application No. 07/837,588
of the rotor as it rotates within the stationary
assembly. (‘176 Application, Spec.
at 13.)
Reading claim 37 in light of the specification, one of
ordinary skill in the art would have known that the electric
motor of the claim includes a rotor. Such a one also would
have known that the final step of claim 37 senses the load on
the claimed motor’s rotor. In view of this knowledge, the
express addition of the rotor to claim 85 amounts to an
insubstantial change from the scope of claim 37.
For the foregoing reasons, we are not persuaded that
claim 85 is not substantially identical to nonelected
claim 37. The appellant’s alleged “error” is a deliberate
choice to file a divisional application rather than traverse
the restriction requirement and a subsequent failure to file
the application timely. We agree with the examiner that this
case falls within the holding of Orita where the court said
that section 251 "is not a panacea designed to cure every
mistake which might be committed by an applicant or his
attorney, and the case at bar exemplifies a mistake which this
section cannot cure." 550 F.2d at 1281, 193 USPQ at 149.
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