Appeal No. 2006-2248
Application No. 10/158,618
55. The Examiner rejected reissue application claims 2-19 as being
unpatentable under 35 U.S.C. § 251 for recapturing subject matter surrendered in
obtaining allowance of claims during prosecution of the application which matured
into the patent sought to be reissued.
56. The Examiner reasoned as follows (see Examiner's Answer
entered July 26, 2004, page 5):
[It] is the [Examiner’s] position that the claims 2-19 are of the same scope as
cancelled claims 1-10 and the record of the application for the patent shows
that the broadening aspect (in the reissue) relates to subject matter that
applicant previously surrendered during the prosecution of the application in
order to obtain allowance there of. Accordingly, the narrow scope of the
claims in the parent was not an error within the meaning of 35 U.S.C. 251,
and the broader scope surrendered in the application for patent cannot be
recaptured by the filing of the present reissue application.
57. The Examiner does on to state (page 6):
Appellants in the parent application canceled all the subject matter drawn to
claims 1-10 of the parent application and the claim [11] that was allowed
was to a specific composition with a particular concentration for each
ingredient.
58. The record supports the Examiner's findings with respect to
what limitations do not appear in reissue application claims 2-19 which were
present in claim 11 of the original application, which became patent claim 1.
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