In re Bose

687 F.2d 432, 215 U.S.P.Q. (BNA) 1, 1982 CCPA LEXIS 113

• Court: Court of Customs and Patent Appeals
• Decided: August 23, 1982
• Docket: Appeal No. 82-507
• Status: Published

Opinions

ORDER

Appellant’s reissue application was filed pursuant only to 37 CFR 1.175(a)(4) and has not been converted to a regular reissue application under 35 U.S.C. § 251 complying with the other provisions of § 1.175. Appellant does not assert otherwise, but relies on the sufficiency of his (a)(4) application as the basis for this appeal.

Prior to the filing of this reissue application, appellant disclaimed certain claims from his patent and after filing can-celled them from the application. 35 U.S.C. § 253 requires that “[s]uch disclaimer ... shall thereafter be considered as part of the original patent.” Therefore, there could be no reissue patent that would differ from the Bose patent as a result of appellant’s first cancellation. Subsequently, appellant cancelled other claims in the application, which claims remain in the Bose patent. However, merely removing claims from an (a)(4) application is not enough to turn such application into an application seeking reissue or avoid the holding that all that has been given by the board is an advisory opinion. The cancellation of claims in appellant’s application did no more than limit the scope of the advisory opinion sought from the Patent and Trademark Office with respect to the remaining claims, all of which are identical to the original Bose patent claims. Thus, the decision of the Board of Appeals before us in this appeal is merely an advisory opinion on an (a)(4) application for the reasons stated in In re Dien, 680 F.2d 151, 214 USPQ 10 (Cust. & Pat.App.1982).

Accordingly, it is: ORDERED that this appeal is dismissed for lack of jurisdiction.