Appeal No. 2006-0386
Application 09/460,222
238 F.3d at 1370-71; 59 USPQ2d at 1600. Accord, Eggert, 67 USPQ2d at 1727; North
American Container Inc. v. Plastipak Packaging Inc., 415 F.3d 1335, 1350, 75 USPQ2d
1545, 1556 (Fed. Cir. 2005); MPEP § 1402.02 (8th ed., rev. 3, Aug. 2005), at 1400-17.
Because claims 1 and 6 of the ‘629 application were rejected under § 112, ¶ 2 as
well as over prior art, we will begin our analysis by addressing the second step of the
Pannu analysis, more particularly by considering whether appellants are correct to
argue that treating canceled claims 1 and 6 as representing surrendered subject matter
under the second step of Pannu is precluded by the fact that those claims stood
rejected for indefiniteness under § 112, ¶ 2, in support of which argument they cite In re
Wesseler, 367 F.2d 838, 151 USPQ 339 (CCPA 1966). If appellants’ argument is
correct, the rejection for reissue recapture must be reversed on that ground, making it
unnecessary to consider the first and third steps of the Pannu analysis.
In Wesseler, all of the claims of the application which ultimately issued as the
original patent had been finally rejected as “being vague and indefinite.” 367 F.2d at
845, 151 USPQ at 344. In addition, some of the claims had been rejected as
unpatentable over a patent to Simmonds. Id. Following a personal interview between
Wesseler’s counsel and the primary examiner,4 the application was amended by
cancelling all of the pending claims in favor of newly added claims 25-27, which became
4 The patent file does not contain a paper recording the suggestions made by
15
Page: Previous 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 Next
Last modified: November 3, 2007