Appeal No. 2004-0659
Application No. 09/111,978
45. The examiner reasoned as follows (see Examiner’s Answer entered
July 31, 2003, pages 3-4) (Italic emphasis added)(Bold emphasis in original):
The following ground(s) of rejection are applicable to the appealed claims:
A. Claims 30-85 are rejected under 35 U.S.C. 251 as being an improper
recapture of broadened claimed subject matter surrendered in the application for
the patent upon which the present reissue is based. See Hester Industries, Inc. v.
Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement,
131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir: 1997); Ball Corp. v. United States;
729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984).
a. Regarding claims 30, 42, 56, 60, and 72, a broadening aspect is present
in the reissue which was not present in the application for patent. 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 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.
In the original application (08/593,095), applicants’ amendment filed on
11/18/96 inserted the limitations “at a substantially constant velocity”, “which
are substantially uniformly spaced”, and “maintaining the at least one projector
and the detector in a substantially fixed relation to each other” into claims 1 and
14 to overcome the rejection. In the remarks, applicant stated that these
limitations are distinct from the prior art. However, in the present reissue
application, these limitations are omitted in the new independent claims 30, 42,
56, 60, and 72. Thus, these claims constitute improper recapture of broadened
claimed subject matter surrendered in the application for the patent upon which
the present reissue is based even though it may be narrower in other respects.
b. Claims 31-41, 43-55, 57-59, 61-71 and 73-85 are dependent claims;
therefore, inherit the deficiencies of the claims on which they depend.
46. The examiner entered a final rejection of claims 30 through 85 on
June 22, 2001.
47. The record supports the Examiner’s findings with respect to what
limitations do not appear in reissue application claims 30 through 85, which were present
in claims 1 and 14 of the original application, as amended.
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