Appeal No. 2005-0841
Application No. 08/230,083
amplifier limitation. Viewing the claims here involved
in their entireties, as we must, rather than in their
disjointed parts, it is apparent that claims of the
particular scope of those at bar were never presented and
asked for in the original application, and there
abandoned by appellant upon a refusal thereof.
In In re Willingham, 282 F.2d at 356-57, 127 USPQ at 215-16,
the court found that the reissue claims, while broader in scope
than allowed claim 15, were somewhat narrower in scope than deleted
claim 12. The court then stated that
[t]he deliberate cancellation of a claim of an original
application in order to secure a patent cannot ordinarily
be said to be an "error" and will in most cases prevent
the applicant from obtaining the cancelled claim by
reissue. The extent to which it may also prevent him
from obtaining other claims differing in form or
substance from that cancelled necessarily depends upon
the facts in each case and particularly on the reasons
for the cancellation.
In the instant case, the reasons for the deletion of
claim 12 of the original application do not appear of
record, and we may not properly speculate as to what they
may have been and base our decision on the results of
such speculation. The appealed claims differ materially
from cancelled claim 12 and there is nothing of record on
which to base a holding that the cancellation of claim 12
was in any sense an admission that the reissue claims on
appeal were not in fact patentable to appellant at the
time claim 12 was deleted.
Id. at 357, 127 USPQ at 215-16.
The court in Wesseler reversed a rejection under 35 U.S.C.
§ 251 wherein the claims presented on appeal defined patentable
subject matter and were narrower in scope than the cancelled claims
in the application which resulted in the appellant's patent but
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