Appeal No. 2001-1041 Page 7
Application No. 09/219,475
On page 1 of the original reissue declaration (filed
December 22, 1998), the appellants assert that they believe "the
claims of the original patent are unduly narrow because they
include limitations not required to distinguish the invention
over the prior art." The appellants then proceed on pages 2-4 of
the original reissue declaration to specifically set forth the
errors in regards to claims 1 and 16. Thus, this reissue
application seeks to enlarge the scope of claims 1 and 16 of the
patent, and was properly filed within two years from the grant of
the patent, as provided by the fourth paragraph of 35 U.S.C.
§ 251. However, the examiner considers claims 1 and 16, as well
as claims 2 to 8 and 17 to 29 dependent thereon, to be
unpatentable under 35 U.S.C. § 251 because they are "an improper
recapture of broadened claimed subject matter surrendered in the
application for the patent upon which the present reissue is
based" (answer, page 3). Specifically, the examiner takes the
position that (answer, pages 3 to 4):
The record of the application for the patent shows that the
broadening aspect (in the reissue) relates to subject matter
that applicant previously surrendered during the prosecution
of the application. Accordingly, the narrow scope of the
claims in the patent was not an error within the meaning of
35 35 U.S.C. § 251, and the broader scope surrendered in the
application for the patent cannot be recaptured by the
filing of the present reissue application.
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