Appeal 2006-2966
Application 09/148,152
c. U.S. Application serial no. 08/352,097 was filed on
November 30, 1994, about four months after receipt of the German
Search Report. At that time, the issuance of the German Search report
was forgotten.
d. During the prosecution of the U.S. application, Dr. Kloepsch
sent to his U.S. associates the Search Report of the PCT Application
identical in scope with the U.S. application. The references of the
PCT Search Report were brought to the U.S. Examiner's attention in
an IDS of January 3, 1996. But, apparently, Dr. Kloepsch still did not
remember the German Search report so the references cited in it were
not brought to the attention of the U.S. Examiner.
e. At least some of the references cited in the German Search
Report may be considered material to the patentability of the generic
claims of the U.S. application [i.e., the subject reissue application].
Principles of Law
Regarding Issue (1):
Under 35 U.S.C. § 251 (1952), reissue is permissible "[w]henever any
patent is, through error without any deceptive intention, deemed totally or
partly inoperative or invalid, by reason of a defective specification or
drawing, or by reason of the patentee claiming more or less than he had a
right to claim in the patent."
The deliberate action on an inventor or attorney during prosecution
generally fails to qualify as a correctible error under § 251. In re Serenkin,
479 F.3d 1359, 1362, 81 USPQ2d 2011, 2014 (Fed. Cir. 2007). There is no
correctable § 251 error when an inventor or attorney deliberately agrees with
an Examiner's requirement that non-elected claims be prosecuted in a
divisional application rather than in the application containing the elected
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013