Appeal No. 2005-2755 2
Application No. 09/612,403
prior art. Appellant has not provided additional evidence
rebutting the prima facie case. Accordingly, the rejection
of claim 19 is affirmed. We note that appellant has not
argued the rejection of dependent claim 22 apart form claim
19 from which it depends. Thus, claim 22 falls with
independent claim 19.
As noted by the examiner in the answer, the rejection
of claims 1-19 and 22 under 35 USC § 251 based on reissue
recapture have been withdrawn by the examiner. Accordingly,
we turn to the rejection under 35 USC § 251 based on a
defective reissue oath. The examiner has rejected the
claims on two bases. First the examiner states that the
reissue oath is defective for failure to identify the
foreign priority application. Additionally, the examiner
states that the appellant has not noted with specificity in
the reissue oath the claim wording that is alleged as
requiring reissue.
With respect to the foreign priority we note that the
examiner is correct in that 37 CFR § 1.175, the regulation
that deals with the contents of a reissue oath, requires
compliance with 37 § CFR 1.63. Thus, it is apparent that
the foreign priority data must be included in the reissue
oath. Appellant argues that the PTO form PTO/SB/51 (12-97)
does not appear to have a space for such information. It is
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