Appeal No. 2001-1596
Application 09/296,102
statement or comment as to the examiner’s reasons for
allowance, and permitted the claims to issue, the omitted
limitation is thus established as relating to subject matter
previously surrendered.
Opinion
After reviewing the record in light of the arguments
presented in appellants’ brief and in the examiner’s answer, we
conclude that the rejection is not well taken.
35 U.S.C. § 251 provides that a patent may be reissued if it
is deemed wholly or partly inoperative or invalid “through error
without any deceptive intention.” Under the recapture rule,
there cannot be said to be an “error” within the meaning of § 251
“[i]f the patentee tries to recapture what he or she previously
surrendered in order to obtain allowance of original patent
claims.” Mentor Corp. v. Coloplast Inc., 998 F.2d 992, 995, 27
USPQ2d 1521, 1524 (Fed. Cir. 1993).
The reissue statute is “based on fundamental principles of
equity and fairness, and should be construed liberally.” Hester
Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 1479, 46 USPQ2d
1641, 1647 (Fed. Cir. 1998), quoting In re Weiler, 790 F.2d 1576,
1579, 229 USPQ 673, 675 (Fed. Cir. 1986). When the Office action
allowing the claims in the original application was issued on
Nov. 19, 1996, the rule concerning reasons for allowance, 37 CFR
5
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