Appeal 2006-2966
Application 09/148,152
d. A final rejection issued September 23, 1996, and a response
was filed December 23, 1996.
e. On January 17, 1997, the Examiner faxed a proposed
amendment to my attorney, proposing to amend Claim 17 to limit it
only to the elected species. That proposal was erroneously agreed to.
[Emphasis added.] The Examiner then entered an Examiner's
Amendment making the proposed changes and allowed the claims.
The patent issued on August 12, 1997.
f. Since the Examiner found the elected "species" allowable,
the generic claims were then per se allowable unless and until the
Examiner would conduct a further search of the remaining "species".
Considering the number of permutations of the denoted "species" (19
x 6 = 114), it was error to have agreed to the cancellation of the
generic claims [sic].
2. Through error and without deceptive intent, references cited in a
Search Report dated July 14, 1994, from the German Patent Office in a
corresponding German application were not brought to the attention of the
U.S. Examiner. The facts, as established by a Declaration of Dr. Gerald
Kloepsch accompanying this Reissue Declaration, are as follows:
a. The Search Report from the German Patent Office was
mailed July 14, 1994, and received July 21, 1994. As was Dr.
Kloepsch's practice, he reported the German Search Report to his
client. As was the usual practice in his office, since no response to a
Search Report is necessary, the Search Report was merely placed in
the respective file, to wait for an Action on the merits.
b. The application Dr. Kloepsch prepared for filing in other
countries was more detailed and of a different scope then [sic] that of
the German application. It was his opinion at that time that the
references cited in the German Search Report were not material to the
scope of the coverage to be obtained in the other countries.
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