Appeal No. 2005-0841
Application No. 08/230,083
Judge Nase, with whom Judges Garris, Delmendo and Franklin
join, concurring-in-part and dissenting-in-part.
We concur with the decision of the majority (set forth in the
plurality and concurring opinions) to affirm the rejection of claim
16 under 35 U.S.C. § 251 albeit based on a different analysis. We
dissent from the decision of the majority to affirm the rejection
of claim 14 under 35 U.S.C. § 251. In our view, the decision of
the examiner to reject claim 14 under 35 U.S.C. § 251 should be
reversed.
OVERVIEW OF OUR POSITION REGARDING CLAIM 14
The majority's affirmance of the claim 14 rejection is in
conflict with the provisions of 35 U.S.C. § 25113 which grant a
13 35 U.S.C. § 251, ¶ 1, provides in pertinent part:
Whenever any patent is, through error without any deceptive intention, deemed
wholly or partly inoperative or invalid, by reason of a defective specification
or drawing, or by reason of the patentee claiming more or less than he had a
right to claim in the patent, the Director shall . . . reissue the patent for
the invention disclosed in the original patent, and in accordance with a new and
amended application, for the unexpired part of the term of the original patent.
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.
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