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1455 MANUAL OF PATENT EXAMINING PROCEDURE
Matter appearing in the original patent which is omitted
by reissue should be enclosed in brackets, while
matter added by reissue should be underlined.
Any material added by amendment in the reissue
application (as underlined text) which is later canceled
should be crossed through, and not bracketed.
Material cancelled from the original patent should be
enclosed in brackets, and not lined through.
All the claims of the original patent should appear
in the reissue patent, with canceled patent claims
being enclosed in brackets.
CLAIMNUMBERING
No renumberingof the original patent claims is permitted,
even if the dependency of a dependent patent
claim is changed by reissueso that it is to be dependent
on a subsequent higher numbered claim.
When a dependent claim in a reissue application
depends upon a claim which has been canceled, and
the dependent claim is not thereafter made dependent
UpOIl a pending claim, such a dependent claim must
be rewritten in independentform.
New claims added during the prosecution of the
reissue application should follow the number of the
highest numbered patent claim and should be completely
underlined to indicate they are tobe printed in
italics. Often, as a result of the prosecution and examination,
some new claims are canceled while other
new claims remain. When the reissue is allowed, any
claims remaining which are additional to the patent
claims (i.e., claims added via the reissue) should be
renumbered in sequence starting with the number next
higher than the number of claims in the original
patent. Therefore, the number of claims allowed will
not necessarily correspond to the number of the last
claim in the reissue application, as allowed.
CLAIMDESIGNATED FOR PRINTING
At least one claim of an allowable reissue application
must be designated for printing in.the Official
Gazette. Whenever at least one claim has been
amended or added in the reissue, the claim (claims)
designated for printing must be (or include) a claim
which has been changedor added by the reissue. A
canceled claim is not to be designated as the claim for
the Official Gazette.
If there is no change in the claims of the allowable
reissue application (i.e., when they are the same as the
August2001 1400-60
claims of the original patent) or, if the only change in
the claims is the cancellation of claims, then the most
representative pending allowed claim is designated
for printing in the Official Gazette.
PROVIDING PROPERFORMAT
Where a reissue application has not been prepared
in the above-indicated manner, the examiner may
obtain from the applicant a clean copy of the reissue
specification prepared in the indicated form, or a
proper submission of a previously improperly submitted
amendment. However, if the deletions from the
original patent are small, the reissue application can
be prepared for issue by putting the bracketed inserts
at the appropriate places and suitably numbering the
addedclaims.
When applicant submits a clean copy of the reissue
specification, or a proper submission of a previous
improper amendment, a supplemental reissue declaration
should not be provided to address this submission,
because the correction of format does not correct
a 35 U.S.C. 251 error in the patent.
PARENT APPLICATION DATA
All parent application data on the front face of the
original patent file wrapper should be placed on the
bibliographic data sheet reprint for 091 and later series
applications or. on the front face of the reissue file
wrapper for 081 and earlier series applications, if it is
still proper.
It sometimes happens that the reissue is a continuation
of another reissue application, and there is also
original-patent parent application data. The examiner
should ensure that the parent application data on the
original patent is properly combined with the parent
application data of the reissue, in the text of the specification
and on the bibliographic data sheet reprint for
091 and later series applications or on the front face of
the reissue file wrapper for 081 and earlier series
applications. The combined statement as to parent
application data should be checked carefully for
proper bracketing and underlining.
REFERENCES CITEDAND PRINTED
The list of references to be printed in the reissue
patent should include both the references cited during
the original prosecution and the references cited during
the prosecution of the reissue application. A