Appeal No. 2000-0132
Application No. 08/934,791
application does not seek to enlarge the scop of the clams
of the original patent.
No reissued patent shall be granted enlarging the scope of
the claims of the original patent unless applied for within
two years from the grant of the original patent.
According to the examiner (Answer, page 5):
The claims presented in the instant reissue
application are drawn to the [sic, a] combination of
one of the nonelected species (from the original
election requirement) together with a carrier in a
chromatographic column.
The examiner goes on to state that this original election
requirement is tantamount to a restriction requirement for the
instantly claimed combination and by not filing a divisional
application, appellants had intentionally surrendered such
claimed subject matter. See the Answer, pages 13-15. The
examiner then concludes that the appellants fail to state “error”
capable of being remedied under Section 251 consistent with In re
Orita, 550 F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 1977). Id.
When applicants cancel claims to the non-elected invention
in response to the examiner’s restriction requirement, and then
fail to file a divisional application embodying the canceled
claims, the applicants are deemed to have acquiesced to the
restriction and are estopped from obtaining by reissue the
subject matter of the canceled claims. In re Weiler, 790 F.2d
1576, 1582-83, 229 USPQ 673, 677 (Fed. Cir. 1986); Orita, 550
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