Appeal No. 2006-0386
Application 09/460,222
applicant argued what appears to be the patentable subject matter that is
defined over the prior art in claim 4; stating “control means selects one of
the plurality of the light emitting means which are associated with the
converging optical systems. By selecting one of the light emitting means,
an aberration caused by the difference of the disk substrate thickness is
minimized.” Regarding claim[s] 6 and 7, applicant raise[d] the issue that
“control means is defined as generating a control signal which is provided
to the selecting means in accordance with the discrimination signal.”
Supplemental Answer at 6. We believe it is clearly evident from these “Remarks”about
claims 4, 6, and 7 (including their mention of claim 6, which was being canceled) that
are directed solely at the examiner’s 112, ¶ 2 criticisms of those claims, which were as
follows:
Claim 4 recites “control means for selecting the light emitting
means”. It is not clear whether the selection means selects one of the
objective lenses or one of the light beams?
Claim 6 & 7 also recites “-- in accordance with a control signal”.
However, the claim fails to recite the source of a control signal.
‘629 application, August 17, 1992, Office action, at 2. Thus, the examiner is incorrect
to contend that “applicant’s current argument that the amendment was intended to
overcome the rejection under 35 USC 112, 2[d] paragraph is not credible.”
Supplemental Answer at 17.
For the foregoing reasons, we agree with appellants that the cancellation of claim
1 in favor of dependent claims 2, 4, 5, and 7-9 did not constitute a surrender of subject
matter, as required by the second step of the Pannu reissue recapture analysis. Thus,
insofar as the question of reissue recapture is concerned, appellants are in the same
posture as if (1) the ‘629 application as filed had not included claim 1 but instead had
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