Appeal 2006-2966
Application 09/148,152
§ 251 that these references may be pertinent to other claims such as former
generic claim 17 and current generic reissue claim 10.
As support for his belief that the above discussed failure is correctable
by reissue, Appellant cites In re Harita, 847 F.2d 801, 6 USPQ2d 1930 (Fed.
Cir. 1988). However, unlike the circumstances before us, the references
cited in the reissue application of Harita rendered at least some of Harita's
patent claims invalid. Id., 847 F.2d at 802, 6 USPQ2d at 1930. Although
the reissue claims patentably distinguished over this prior art, they were
subjected to an "inequitable conduct" rejection which was reversed. Harita,
847 F.2d at 802, 6 USPQ2d at 1930. Because these facts are completely
dissimilar to those before us, the Appellant's position is not supported by
Harita.
Summary of Analysis of Defective Reissue Declaration Rejection
For the above-stated reasons, the Reissue Declaration of record is
defective in that it fails to present any error which is correctable by reissue
under 35 U.S.C. § 251.
Analysis of The Recapture Rejection
This rejection of newly added reissue claims 10-39 is based on the
Examiner's determination that generic reissue claim 10 is an attempt by
Appellant to recapture subject matter which was surrendered when
Appellant authorized the Examiner to amend generic claim 17 of the '177
patent application to narrow its coverage to the elected species only.
However, there is no evidence that Appellant authorized this narrowing
13
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013