Appeal No. 1998-0812 Page 9
Application No. 08/378,954
369, 370-71 (Fed. Cir. 1984), cert. denied, 469 U.S. 1209 (1985).
Nevertheless, "deliberate withdrawal or amendment . . . cannot be
said to involve the inadvertence or mistake contemplated by 35 U.S.C.
Section 251." Haliczer v. United States, 356 F.2d 541, 545, 148
USPQ 565, 569 (Ct. Cl. 1966). The recapture rule, therefore,
prevents a patentee from regaining through reissue the subject matter
that he surrendered in an effort to obtain allowance of the original
claims. See Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 995, 27
USPQ2d 1521, 1524 (Fed. Cir. 1993). Under this rule, claims that are
"broader than the original patent claims in a manner directly
pertinent to the subject matter surrendered during prosecution" are
impermissible. Id. at 996, 27 USPQ2d at 1525. In addition, to
determine whether an applicant surrendered particular subject matter,
one must look to the prosecution history for arguments and changes to
the claims made in an effort to overcome a prior art rejection. See
Mentor, 998 F.2d at 995-96, 27 USPQ2d at 1524-25; Ball Corp. v.
United States, 729 F.2d 1429, 1436, 221 USPQ 289, 294-95 (Fed. Cir.
1984).3
3 For further information on "recapture," we direct the
examiner's attention to MPEP § 1412.02 (Seventh Edition, Rev.
1, Feb. 2000).
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007