Appeal No. 2003-0124
Application No. 09/487,832
reissue is based. The Examiner argues that the subject matter of
claims 2-4 and 9 of the original application was previously
surrendered upon the issue of the original application. See
pages 2 and 3 of the Examiner's final rejection.
In the declaration of Hedley W. Austin, Mr. Austin declares
that he was in charge of directing the prosecution of the
original application that became U.S. Patent No. 5,710,540 ("the
'540 patent"). Mr. Austin declares that he saw the official
action of September 30, 1996, relevant to the original
application, that the Examiner indicated that claims 2 and 3
would be allowable if rewritten in independent form to include
all the limitations of Appellants' claim 1 and that claims 4 and
9 would be allowable if rewritten to cure the "lack of antecedent
basis" issues due to improper dependent claims. Mr. Austin
further declares that he completed and prepared detailed
instructions to the U.S. attorney Mr. D. Gordon to file an
amendment preserving the subject matter of claims 2-4 and 9. On
February 12, 1997, Mr. Gordon submitted an amendment in response
to the office action of September 30, 1996, incorporating the new
claim which Mr. Austin had provided him. The new claims did not
preserve the subject matter of claims 2-4 and 9 but instead were
substantially narrower in scope than claims 2-4 and 9. Mr.
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