Appeal No. 2003-0124
Application No. 09/487,832
35 U.S.C. § 251, ¶ 4, provides:
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.
Thus, the plain meaning of the statue allows for broadening of
the scope of the claims of the original patent by reissue if
applied for within two years from the grant of the original
patent and the error is without any deceptive intention.
In summary, the record shows that the Examiner had indicated
that claims 2 and 3 in the original application were allowable.
The Examiner also had indicated that claims 4 and 5 would be
allowable if rewritten to cure the 35 U.S.C. § 112, second
paragraph, issues of lack of antecedent basis due to improper
dependency. Furthermore, the record contains evidence that the
Appellants did not intend to surrender the subject matter of
claims 2-4 and 9 of the original application.
With respect to a different but related issue, namely,
prosecution history estoppel, the United States Supreme Court
recently recognized that,
[u]nfortunately, the nature of language makes
it impossible to capture the essence of a
thing in a patent application. The inventor
who chooses to patent an invention and
disclose it to the public, rather than
exploit it in secret, bears the risk that
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