Appeal No. 2000-0132
Application No. 08/934,791
Implicit in Graff is that the surrender of a defective patent
does not occur until all of the continuation or divisional
reissue applications are issued consistent with Section 251,
paragraphs 2 and 3. Thus, it cannot be argued that Section 251
does not authorize reissuance of U.S. Patent No. 4,818,394
through the present reissue application.
In view of the foregoing, we reverse the examiner’s Section
251 rejection based on lacking statutory basis for failure to
state “error” capable of being remedied under Section 251.
We turn next to the examiner’s rejection of claims
21 through 25, 27, 31, 44 through 46, 48, 52, 54, 55 and 61 under
35 U.S.C. § 251 as “not being drawn to the same invention as the
original patent.” According to the examiner (Answer, page 13):
If it were found to that the election of species
requirement did not apply to the column claims, then
the only explanation could be that the rejection under
35 U.S.C. § 251 as not being drawn to the same
invention as the original patent is proper [sic].
However, the appellants correctly point out that Section 251
“does not prohibit the reissue of claims directed to a different
statutory class of invention than the claims that issued in the
original patent.” See the Brief, page 8. The first paragraph of
Section 251 provides that:
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