Ex Parte Rosenberg et al - Page 20



             Appeal No. 2005-0642                                                                               
             Application No. 09/568,278                                                                         

                                                      (2)                                                       
                                          Recapture is not an error                                             
                                    within the meaning of 35 U.S.C. § 251                                       
                   What has become known as the “recapture rule,” prevents a patentee from                      
             regaining through a reissue patent subject matter that the patentee surrendered in                 
             an effort to obtain allowance of claims in the patent sought to be reissued.  In re                
             Clement, 131 F.3d 1464, 1468, 45 USPQ2d 1161, 1164 (Fed. Cir. 1997).                               
                   If a patentee attempts to “recapture” what the patentee previously                           
             surrendered in order to obtain allowance of original patent claims, that “deliberate               
             withdrawal or amendment ... cannot be said to involve the inadvertence or mistake                  
             contemplated by 35 U.S.C. § 251, and is not an error of the kind which will justify                
             the granting of a reissue patent which includes the [subject] matter withdrawn.”                   
             Mentor Corp. v.Coloplast, Inc., 998 F.2d 992, 995, 27 USPQ2d 1521, 1524 (Fed.                      
             Cir. 1993), quoting from Haliczer v. United States, 356 F.2d 541, 545, 148 USPQ                    
             565, 569 (Ct. Cl. 1966).4  See also Hester Industries Inc. v. Stein, Inc., 142 F.3d                
             1472, 1480, 46 USPQ2d 1641, 1647 (Fed. Cir.), cert. denied, 525 U.S. 947 (1998).                   
                                                                                                               
             4   Haliczer is binding precedent.  See South Corp. v. United States, 690 F.2d                     
             1368, 215 USPQ 657 (Fed. Cir. 1982) (in banc) (decisions of the former U.S.                        
             Court of Customs and Patent Appeals and former U.S. Court of Claims decisions                      
             are binding precedent).                                                                            
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