Appeal No. 2006-2248
Application No. 10/158,618
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Applicant[s] never intended to surrender the subject matter set forth in
this reissue application.
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It is apparent that [Applicants] never intended to surrender the subject
matter in claims 1 to 10 of the ‘880 Application and always intended
to file a continuation application with these claims. (Exh. C, ¶7) It
was an inadvertent error, and not deceptive in any way, that a
continuation application was not filed. (Exh. C, ¶8) [Applicants
believe] that these circumstances overcome the rejection because
[Applicants] never intended to abandon the pending subject matter
and never intended not to file a continuation application.
Thus, Appellants assert the rejection is overcome. We disagree.
As discussed at Section C. 1. (11) supra, we hold that the admissible
rebuttal evidence should be limited to (1) the prosecution history of the application
which matured into the patent sought to be reissued and (2) showings related to
what was known by a person having ordinary skill in the art at the time an
amendment was made. Admitting evidence not available to the public, such as the
declaration of Andrea L. Colby (counsel for applicants) giving mental impressions
from the attorney who made the amendment, would undermine the public notice
function of the patent and its prosecution history. Thus, we give no weight to the
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