Appeal No. 2006-2248
Application No. 10/158,618
(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the granting of a reissue patent which includes the [subject] matter withdrawn.”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).3 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).
3 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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