Appeal 2007-1432
Application 09/141,186
Patent 5,549,673
V. NEW GROUNDS OF REJECTION
A. 35 U.S.C. § 251
We reject reissue claims 18 and 20-26 under 35 U.S.C. § 251, using
our authority under 37 C.F.R. § 41.50(b).
Appellant’s reissue oath alleges “I erred by claiming less of my
invention than I had a right to claim.” Even if we adopt Appellant’s position
with respect to recapture, we find no such error with respect to claims 18 and
20-26. As to the subject matter of these claims, the prosecution of
Application 08/118,097, its parent application, and the patent resulting from
Application 08/118,097 are all error free. As to these claims, Patentee
claimed exactly what they had a right to claim in the patent, no more, no
less.
Appellant’s prosecution history shows that responsive to a restriction
requirement, Appellant elected to prosecute an application directed to a
distinct invention, i.e., a system of implantation. (See FF 11-13 and 16).
Reissue claims 18 and 20-26 are directed to a different invention than that of
patent claims 1-3. (See FF 1-2). Reissue claims 18 and 20-26 do not result
in implantation (i.e., insertion) of anything. Therefore, contrary to the
preambles of these claims they are not a system of implantation. Rather,
these reissue claims merely recite a series of implants and a series of sizing
instruments.
Appellant is estopped from obtaining by reissue claims which,
because of a requirement for restriction in which he had acquiesced, he
could not claim in his patent. See In re Orita, 550 F.2d 1277, 1280,
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