Appeal 2007-1432
Application 09/141,186
Patent 5,549,673
45. Additionally, the Examiner based the rejection of claims 16-26
on the grounds that when faced in the original application with a rejection
under 35 U.S.C. § 103 over Koufman, Isshiki, Stevens, and Ripple,
Appellant made a significant argument with respect to amended claims
14-16. (See Finding of Fact 28 supra with respect to Appellant’s argument
regarding claim limitations (1)-(3) in Finding of Fact 27.)
46. The Examiner reasoned in-part as follows “appellant stated
‘[a]ll of these claims [14-16] now include a holding portion, inserting
instrument and engaging means.’” (Supp. Answer 7, second full paragraph).
47. The Examiner further reasoned that the limitations relied upon
by Appellant in securing the grant of the patent “are completely deleted
(omitted) from all the disputed claims” (Supp. Answer 10) and “the reissue
claims are broader than the original patent claims by not including the
surrender-generating limitations” (Supp. Answer 11).
48. The record supports the Examiner’s findings with respect to
what limitations do not appear in reissue application claims 16-26 which
were present in claims 1-3 of the original application, as allowed.
49. Additionally, the Examiner has rejected reissue application
claims 1-3 and 16-26 under 35 U.S.C. § 251 as being based upon a defective
reissue declaration since the present application seeks “recapture” of subject
matter surrendered in obtaining allowance of the patent claims as noted
above.
- 16 -
Page: Previous 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 Next
Last modified: September 9, 2013