Appeal No. 2006-1049
Application No. 09/667,826
a claim which was rejected based on prior art, nor does this Board know of such a
theory.
The Examiner has shown that the reissue claims are broader than the patent
claims, but has not shown that the broader aspects of the reissued claim relate to
surrendered subject matter. Pannu v. Storz Instruments, Inc., 258 F.3d 1366, 1371,
59 USPQ2d 1597, 1600 (Fed. Cir. 2001).
IV. DISCUSSION – REJECTION UNDER 35 U.S.C. § 112
A. The Prima Facie Case
Our Findings of Fact 86 sets out the basis upon which the Examiner made a
written description rejection.
The Examiner repeatedly states that the specification does not describe a
system in which the “means for separately correcting offsets in the detection
signals are not parallel connected” (Final Rejection at page 4, answer at page 5).
However, Appellants’ original specification contained claim 1 which did not
include this limitation. This means that ultimately the Examiner’s position is that
given originally filed claim 1, an artisan could not build a “non-parallel” correcting
means.
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