Appeal No. 2005-0841
Application No. 08/230,083
and it was indicated in the first Office action that
the claims would be allowable if placed in an
independent format. The remainder of the claims were
rejected over prior art. * * *
[T]he original independent claims, which were rejected
by the examiner based on prior art, did not contain:
Element E: a surrounding rim on the inner frame
carrying rib members spaced transversely with stays
extending therefrom and a surrounding frame joining the
stays [From original claim 2 of the original
application; claim 2 was objected to and found
patentable in the original application]
Element Z: wherein the locking element is guided over
a dovetail guide on the outer surface of the outer
housing [From original claim 12 of the original
application; claim 12 was objected to and found
patentable in the original application]
To overcome the prior art rejection against the claims not
having either [Element] E or [Element] Z, the applicants
[sic, applicant] rewrote those [rejected] claims to add
either [a] limitation [containing Element] E or limitation
[containing Element] Z, from the relevant dependent claims.
. . .
. . . [B]ecause the limitations ... represented as element E
or Z ... are absent from the reissue claims being rejected
... the claims impermissibly recapture what was previously
surrendered.
57. With respect to reissue application claim 14, the
examiner goes on to state (page 4):
Reissue claim 14 completely omits the ... limitation of
originally filed claim 2 (element E), and therefore,
impermissibly recaptures what was previously
surrendered. . . . [E]lement Z ... is also not made a part
of reissue claim 14. Thus, claim 14 contains neither
element E nor element Z.
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