Appeals 2006-2874 and 2006-2747
Applications 08/544,212 and 09/287,664
Patent 5,401,305
1 gaseous mixture would also have silicon oxide. Moreover, during the
2 original prosecution, the Examiner determined that precursors of only
3 certain silicon oxide were enabled and Appellants did not argue otherwise in
4 amending original application claim 1 to incorporate the limitations of
5 original application claim 11.
6 Appellants maintain that claim 33 deals with a film which is made
7 from a gaseous composition and that none of the claims in the application
8 which matured into the patent sought to be reissued involved films. While
9 none of the claims in the original application were directed to films per se,
10 one cannot overlook claim 4 of the application (which matured into claim 4
11 of the patent) where Appellants claim a gaseous composition adapted to be
12 deposited onto a continuously moving transparent flat glass substrate. What
13 is deposited on the substrate is a film. We would also note that when
14 Appellants received a patent to the gaseous composition of claim 1 of the
15 patent, Appellants and their assignee acquired a right to exclude others from
16 using the gaseous composition of claim 1 of the patent. The principal, if not
17 the only, described use of the gaseous composition is to make films on
18 substrates.
19 We cannot imagine that a member of the public studying the
20 prosecution history of the original application, in the face of the Examiner’s
21 lack of enablement rejection, would believe that Appellants could come back
22 to the Office to seek a film claim which does not include the silicon oxide
23 limitation of claim 1 of the patent.2
2 At this point, we observe that a lack of enablement rejection of claim 33
is not included in the Examiner’s Answer. Perhaps the Examiner felt the
recapture rejection was sufficient to dispose of claim 33. In the event of
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