Appeal No. 2005-0841
Application No. 08/230,083
The apparatus of the original claims rejected by the
examiner based on prior art did not contain certain "elements"
which the examiner refers to as "Element E" and "Element Z":
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--
found in original application claim 2, but
not original application claim 1.
Element Z: wherein the locking element is
guided over a dovetail guide on the outer
surface of the outer housing--found in
original application claim 12, but not
original application claims 1, 10 or 11.
Because the Element E or Z limitations are absent from
the reissue claims being rejected and since those
limitations are germane as to why the prior art did not
reach claims containing Elements E or Z, the examiner
has correctly placed the claims sought to be reissued
within Substep (3)(a) of Step (3) of Clement.
As the examiner accurately notes, with respect to
reissue application claim 14:
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.
[Supplemental Examiner’s Answer, page 4]
With respect to reissue application claim 16, the
examiner further accurately notes:
Reissue claim 16 omits the ... limitation of
originally filed claim 2 (element E), and
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