Appeal No. 2005-0841
Application No. 08/230,083
plurality's and concurrence's position that the embodiment of first
and second resilient clip connections defined by claim 14 has been
surrendered and therefore cannot now be claimed by reissue except
in combination with the surrounding rim embodiment defined by
original dependent claim 2 and by patent claim 1. The merit of
this position is questionable for a number of reasons.
First, the now claimed embodiment of first and second
resilient clip connections cannot have been surrendered by patentee
because this embodiment had never before been claimed by patentee.
Not one of the original or amended claims presented by patentee in
his original patent application was ever directed to the particular
embodiment now defined by appealed claim 14. We perceive no
convincing rationale in support of the plurality's and
concurrence's view that patentee has surrendered an embodiment
which had never been claimed (and therefore never argued). To the
contrary, this failure to claim an embodiment, which has been
expressly disclosed as part of the invention and which patentably
distinguishes over the prior art, is the very type of error 35
U.S.C. § 251 is meant to allow or permit to be corrected.
Second, as previously indicated, the majority apparently
believes that the claim 14 embodiment of first and second resilient
clip connections would avoid recapture and thus be allowable only
if combined with the surrounding rim embodiment of original claim 2
and patent claim 1. This belief presupposes that the two
embodiments are compatible. In this case, such a presupposition is
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