Ex Parte BEALE - Page 18



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

                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                includes the [subject] matter withdrawn.”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. 1998).                                                       

                                                     (3)                                                     
                                               In re Clement                                                 
                      The Federal Circuit’s opinion in Clement discusses a three-step test                   
                for analyzing recapture.                                                                     
                      Step 1 involves a determination of whether and in what aspect any                      
                claims sought to be reissued are broader than the patent claims.  The Federal                
                Circuit reasoned that a reissue application claim deleting a limitation or                   
                                                                                                            
                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).                                                     

                                                   - 18 -                                                    

Page:  Previous  11  12  13  14  15  16  17  18  19  20  21  22  23  24  25  Next

Last modified: September 9, 2013