Ex Parte Wellerdieck et al - Page 12

                Appeal  2007-1119                                                                            
                Application 10/200,207                                                                       
                filing date.  In fact, the term of such a patent would have been identical to                
                the term they now have, unless Applicants chose to forgo the benefit of                      
                § 120 to one or more of the parent applications.  That course of action,                     
                however, would subject them to prior art dating from 23 June 1986 (the                       
                filing date of their Swiss application) until whatever benefit date they chose.              
                At oral argument, Applicants indicated that they had always intended to                      
                keep their § 120 benefit dates.                                                              
                      Finally, even if the requested relief were statutory and the requested                 
                corrections would have yielded the result Applicants seek, Applicants have                   
                not shown that their error was one that is correctable by reissue.  As the                   
                Federal Circuit has explained, "[t]he reissue statute was not enacted as a                   
                panacea for all patent prosecution problems, nor as a grant to the patentee of               
                a second opportunity to prosecute de novo his original application."  In re                  
                Weiler, 790 F.2d 1576, 1582, 229 USPQ 673, 677 (Fed. Cir. 1986).  Thus,                      
                "not every event or circumstance that might be labeled 'error' is correctable                
                by reissue."  Id. at 1579, 229 USPQ at 677.  As emphasized in a recent                       
                decision, "Our case law holds that the deliberate action of an inventor or                   
                attorney during prosecution generally fails to qualify as correctable error                  
                under § 251."  In re Serenkin, 479 F.3d 1359, 1362, 81 USPQ2d 2011, 2014.                    
                In Serenkin, the court found that the applicant "intentionally and knowingly                 
                surrendered his right to a claim of priority, in exchange for a benefit, and is              
                now unhappy with his choice."  479 F.3d at 1364, 81 USPQ2d at 2014.  The                     
                court distinguished a number of cases, including several cited by Applicants                 
                to us, as being based on errors that "were the result of inadvertence,                       
                accident, or mistake, which are clearly appropriate bases for reissue. . . . The             


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