Appeal No. 2006-1873 Page 8
Reissue Application No. 08/058,163
chloro-2-methylcyclohexanecarboxylate (id.).
26. However, the pheromone recited in reissue claims 14 and 16 is “1,1-dimethyl-
chloro-2-methylcyclohexane-1-carboxylate.”
27. “Tert tert-butyl 4(or 5)-chloro-2-methylcyclohexanecarboxylate” is not the same
compound as “1,1-dimethyl-chloro-2-methylcyclohexane-1-carboxylate.”
Thus, appellants have not provided evidence sufficient to establish that the
compound recited in reissue claims 14 and 16 is necessarily a liquid.
On the present record,4 we hold that reissue claims 1-12, 14 and 16-19 violate
the two year period of limitation on applying for broadening reissues as set forth in
§ 251. Since appellants are not entitled to improperly broadening reissue claim 1,
appellants are not entitled to dependent reissue claims 13 or 14. Since the evidence of
record is insufficient to establish that the compound covered by reissue claims 14 and
16 is necessarily a liquid pheromone, appellants are not entitled to a patent on reissue
claims 14 or 16. While reissue claim 15 appears not to violate the two year limitation on
applying for broadening reissues, we take no position on whether it is patentable over
the prior art of record, especially in view of the inadequacy of the record as explained in
the miscellaneous remarks below.
2. new ground of rejection entered by the Board
Consequently, claims 1-14 and 16-19 are rejected under 35 U.S.C. § 251 as
being broadened in a reissue application filed outside the two year statutory period.
4 The record before us is a reconstructed file of reissue application 08/058,163. Although copies
of the ‘968 patent and Hawley were not present in the reconstructed file, we were able to locate copies of
these references as discussed in Paper 8. Appellants presumably have copies of these references in their
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