Appeal No. 2006-1873 Page 6
Reissue Application No. 08/058,163
dimethyl-chloro-2-methylcyclohexane-1-carboxylate, respectively. According to
appellants, “if ‘trimedlure’ and ‘Grandlure’ are liquids, and if ‘trimedlure’ and ‘Grandlure’
are the same as the compounds recited in Claims 13 and 14, then it follows that the
compounds in Claims 13 and 14 must also be liquids” (Brief, sentence bridging pp. 3-4).
In other words, rewriting original claims 13 and 14 in independent form apparently would
not violate the two year period of limitation on broadening reissue claims
notwithstanding removal of the requirement that the pheromone of the claimed
composition be a solid pheromone because the pheromone of the originally patented
composition was not a solid pheromone. Independent reissue claims 15 and 16 are
limited to the exact composition set forth in original claims 13 and 14 of the patent.
Therefore, as to reissue claims 13-16, the issues for consideration are whether
the compounds recited therein are (a) trimedlure and grandlure and (b) necessarily
liquids. Appellants contend that evidence has been filed with the reissue application
showing that “grandlure” and “medlure” are liquids (Brief, p. 3). Specifically, US patent
3,954,968 (“the ‘968 patent”) is said to show that “grandlure” is an oil (i.e., liquid) and
page 1180 from Hawley’s Condensed Chemical Dictionary, 12th ed, Van Nostrand
Reinhold Company, 1993 (“Hawley”), is said to show that “medlure” is a liquid (Reply
Under 37 CFR § 1.111 filed 1 June 2004 (Paper 8), pp. 1-2, filed in response to the
Office Action mailed 16 May 1994 (Paper 7)).
20. The pheromone recited in reissue claims 13 and 15 is cis-2-isopropylpentyl-1-
methyl-cyclobutane-ethanol.
21. “Grandlure” is described in the original and reissue specifications as “cis-2-
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