Appeal 2006-2966
Application 09/148,152
Claims 10-39 are rejected under 35 U.S.C. § 251 "as being an
improper recapture of claimed subject matter deliberately canceled in the
application for the patent upon which the present reissue is based" (id. at 3).
The Issues
(1) Regarding claims 1-39, is the Reissue Declaration of record
defective for failing to establish an error that is correctable by reissue under
35 U.S.C. § 251?
(2) Do claims 10-39 violate the recapture rule by reciting subject
matter that was deliberately surrendered in an effort to obtain allowance of
the '177 patent claims?
The Reissue Declaration
The Reissue Declaration, filed November 16, 1998, presents two
errors in support of reissue. These errors and the undisputed facts which
engendered the errors are copied below from pages 1-2 of the Declaration.
1. Through error and without deceptive intent, the patent was allowed
to issue without a generic claim. The facts are as follows:
a. On October 4, 1995, the Examiner issued an Action making
two election of species requirements, the first being a choice from
among 19 defined "species" of compounds and the second being a
choice from among six defined "species" of uses;
b. On January 3, 1996, a provisional election was made;
c. On June 28, 1996, an Amendment was filed in response to
an Office Action dated April 9, 1996, inserting a number of claims,
including a generic claim numbered "17".
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