Appeal No. 2007-0441
Reissue Application 10/155,945
Patent 5,311,959
1 Program Printout Appendix from the '257 patent resulted in the absence of
2 approximately 330 pages of text from the specification. It would seem that
3 such an error would be readily apparent.” Southwest Software, Inc. v.
4 Harlequin, Inc., 226 F.3d 1280, 1296, 56 USPQ2d 1161, 1173, (Fed. Cir.
5 2000). The error in the case before us is also “readily apparent.”
6 The decision of the Examiner rejecting the claims under 35 U.S.C.
7 § 251, fourth paragraph has not been shown to be erroneous.
8 Likewise, the decision of the Examiner rejecting the claims under 35
9 U.S.C. § 251, third paragraph has not been shown to be erroneous.
10 At first blush, the third paragraph rejection might appear to relate to a
11 procedural matter. However, the rejection turns on whether reissue claim 1
12 enlarges the scope of patent claim 1—which is a merits issue. Having
13 concluded that impermissible enlargement occurred, we have no occasion to
14 question the Examiner’s decision to treat the third paragraph issue as a
15 merits issue. We now affirm the Examiner’s third paragraph rejection.
16 What is curious to us is why the third paragraph rejection reached us
17 at all. We have not been able to divine from the record exactly why the
18 inventor could not have signed the reissue oath. The inventor’s address is
19 set out in the reissue oath as being located in Bristol, Virginia. So far as we
20 can tell, the inventor is available. When an inventor refuses to sign an
21 application or cannot be found, the provisions of 35 U.S.C. § 118 would
22 seem to be a possibility.
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