Appeal No. 2005-2750
Application 09/460,221
367 F.2d at 845, 151 USPQ at 345. The court noted that in affirming the examiner’s
rejection of the reissue claims on the ground of reissue recapture, the board held that
the italicized language in the foregoing passage
* * * points out specifically that the examiner would consider
allowance only with such specific limitations [the channel with the laterally
offset ear] pertaining to the mounting.
(Brackets in Wesseler.) 367 F.2d at 845-46, 151 USPQ2d at 345. The court disagreed:
On the above facts we do not agree with the conclusion of the
board that the remarks accompanying the three claims show "specifically
that the examiner would consider allowance only with such specific
limitations pertaining to mounting." Insofar as the inclusion of a specific
limitation is concerned, the remarks establish that the attorney considered
he was obtaining protection for the two "highly useful results" in presenting
a generic and two species claims. Insofar as the act of cancelling claims
is concerned the record does not show whether this was an admission
that those claims were unpatentable over the prior art or whether they
were cancelled and the amended claims were submitted to cure the
"vague and indefinite" rejection.
(Footnotes omitted.) 367 F.2d at 846, 151 USPQ at 345-46.
Appellants’ Wesseler argument clearly has merit with respect to claim 1. The
stated basis for the § 112, ¶ 2 rejection of that claim, which recited, inter alia, “N
converging means whose aberrations have been respectively corrected for said N (N ≥
2) disc substrates having different thicknesses,” was that “it is not clearly recited
according to what structural element or means the aberrations had been corrected.”
August 17, 1992, Office action, at 2. This criticism was not additionally directed at any
of dependent claims 2 and 4-9, which described the converging means of the various
embodiments in greater detail. As a result, it is apparent that appellants could have
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