Appeal No. 1998-2911
Application 08/314,345
21) for the respective positions of the appellants and the
examiner with regard to the merits of this rejection.2
DISCUSSION
Reissue claims 35 and 36 are broadened versions of claims
1 and 2 in U.S. Patent No. 5,151,019. The record in U.S. 3
Patent No. 5,151,019 shows the following with respect to the
prosecution of claims 1 and 2.
A. On February 4, 1992, the examiner entered a final
rejection (Paper No. 16) wherein claims 1 and 2
were rejected under 35 U.S.C. § 103 as being
2 Although the statement of rejection in the examiner’s
answer refers to “the equitable doctrine of recapture,” the
accompanying explanation indicates that the rejection is
actually based on the provisions of 35 U.S.C. § 251. This is
in accord with the prevailing view that the prohibition
against the improper recapture of surrendered subject matter
via reissue has statutory underpinnings. See, for example,
Hester Industries Inc. v. Stein Inc., 142 F.3d 1472, 46 USPQ2d
1641 (Fed. Cir. 1998) and MPEP § 1412.02.
3 Allowed reissue claim 1 is identical to patent claim 1.
Allowed reissue claim 2 is identical to patent claim 2 except
for the inclusion of a phrase (not at issue here) which was
inadvertently omitted from the patent due to a printing error.
3
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