Ex Parte BEALE - Page 17



                Appeal 2007-1432                                                                             
                Application 09/141,186                                                                       
                Patent 5,549,673                                                                             

                      IV. DISCUSSION –  REJECTION UNDER 35 U.S.C. § 251                                      
                                         A.  Recapture Principles                                            
                                                     (1)                                                     
                                                The statute                                                  
                      The reissue statute expressly permits a patentee to correct an error                   
                thus permitting patentee to obtain reissue claims broader than the originally                
                issued patent claims at any time within two (2) years from the date the                      
                original patent issues.  More particularly, 35 U.S.C. § 251, ¶¶ 1 and 4,                     
                provide in pertinent part:                                                                   
                      Whenever any patent is, through error without any deceptive                            
                      intention, deemed wholly 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 Director shall, on the surrender of such patent                     
                      and the payment of the fee required by law, reissue the patent                         
                      for the invention disclosed in the original patent, and in                             
                      accordance with a new and amended application, for the                                 
                      unexpired part of the term of the original patent.                                     
                      No reissued patent shall be granted enlarging the scope of the                         
                      claims of the original patent unless applied for within two years                      
                      from the grant of the original patent.                                                 
                                                     (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               

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