Appeal No. 99-0184 Page 6
Application No. 08/567,510
open invitation to reissue every case in which it may appear .
. . the purpose of the reissue statute is to avoid forfeiture
of substantive rights due to error made without intent to
deceive." Scripps Clinic & Research Found. v. Genentech,
Inc., 927 F.2d 1565, 1575, 18 USPQ2d 1001, 1009 (Fed. Cir.
1991).
The "divisional doctrine" set forth in Orita clearly does
not apply to the facts of this case. In that regard, we note
that method claim 15 was never subject to a restriction
requirement. Thus, there never was a determination by the PTO
that the subject matter of claim 15 was restrictable from the
subject matter of claims 1 through 8 (i.e., that the subject
matter of claim 15 defines an independent and distinct
invention from the subject matter of claims 1 through 8).
Furthermore, it is our opinion that it is inappropriate to
extend the "divisional doctrine" set forth in Orita to cover
the facts of this case.4
4In addition, we direct the examiner's attention to the
public record set forth in the unpublished decision of the
U.S. Court of Appeals for the Federal Circuit reproduced at 36
USPQ2d 1510 (In re Swartzel).
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