1 obvious over the count. Dawson makes what appears to be an attempt to
2 minimize or possibly obviate the application of In re Deckler, 977 F.2d
3 1449, 24 USPQ 1448 (Fed. Cir. 1992) and Ex parte Tytgat, 225 USPQ 907
4 (Bd. App. 1985), to yet unfiled reissue claims.
5 If a reissue application is filed, the Examiner will undertake an
6 examination of that reissue application. 35 U.S.C. § 131. If in the opinion
7 of the Examiner, a rejection based on Deckler is appropriate, the Examiner is
8 free to make the rejection notwithstanding any attempt by Dawson in the
9 motion conceding priority to preempt action by the Examiner. 35 U.S.C.
10 § 132. When a judgment is entered in an interference, the estoppel
11 provisions of 37 C.F.R. § 41.127(a) become applicable. As the Board
12 indicated in Kaufman v. Talieh, Interference 105,233, Paper 23, page 2
13 (Bd. Pat. App. & Int. Nov. 19, 2004) (Exhibit 1003), reservations made in
14 concessions of priority do "not negate the effects of 37 CFR § 41.127
15 [formerly 37 CFR § 1.658(c)] regarding interference estoppel."
16 In addition to possible unpatentability under 35 U.S.C. §§ 102 and
17 103, if a claim is presented in a reissue which in the opinion of the Examiner
18 could have been presented in a Dawson reissue filed during, and added by
19 motion, to the interference, a rejection based on estoppel for failure to move
20 may also be appropriate.
21 If a reissue is filed, the Examiner is free to ignore the reservations
22 attempted to be made by Dawson in the motion conceding priority. If (1) a
23 reissue is filed and (2) a rejection is made, then Dawson can then contest the
24 rejection—but not before.
5
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