Appeal No. 98-0377
Application 08/573,460
arose without any deceptive intent or intention (see pages 3,
4 and 5).
Notwithstanding the appellant’s express disavowal of any
deceptive intention, the examiner entered and maintained the
§ 251 rejection on appeal because
Appellant [had] sufficient time (i.e. two
months) to correct the error by either submitting
[an] Information Disclosure Statement, Amendment
under 37 CFR § 1.312(b) or by petition to [withdraw]
the application from issue. However, Appellant
chose not to do so, instead, he intentionally
permitted the letters patent to issue with a known
defect. Therefore, no “error without deceptive
intent”, a condition precedent to reissue, has been
established [answer, page 5].
The examiner’s position here is unsound for at least two
reasons.
To begin with, in rejecting a claim an examiner bears the
initial burden of presenting a factual basis establishing a
prima facie case of unpatentability. In re Oetiker, 977 F.2d
1443, 1445-46, 24 USPQ2d 1443, 1444-45 (Fed. Cir. 1990);
In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed.
Cir. 1984). Thus, with regard to the rejection on appeal the
examiner had the initial burden of presenting a factual basis
establishing a prima facie case that the errors at issue did
not arise without any deceptive intention. The facts relied
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