Appeal No. 2006-0386
Application 09/460,222
claims 1-3 of the issued patent (2,939,664). The new claims each recited at least one
feature (e.g., an offset ear in claim 25) which did not appear in the canceled claims.
The remarks which accompanied the amendment read in pertinent part as follows:
In an effort to expedite prosecution of this case and bring it to a
close, this amendment after final rejection is presented for the examiner's
further consideration. Applicant has herein attempted to follow completely
the procedures and suggestions presented by the Primary Examiner
insofar as they were understood. Accordingly, three new claims have
been herein presented. Claim 25 is believed to be generic, and Claims 26
and 27 are believed to be species contemplated by said generic claim.
[Emphasis added.]
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
the primary examiner during the interview.
16
Page: Previous 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 Next
Last modified: November 3, 2007