Appeal No. 99-0184 Page 7
Application No. 08/567,510
For the reasons stated above, the decision of the
examiner to reject claim 15 under 35 U.S.C. § 251 is reversed.
Claims 9 through 14
We will not sustain the rejection of claims 9 through 14
under 35 U.S.C. § 251.
The issue presented by the examiner and the appellant is
whether the "recapture doctrine" is applicable in this
application. We agree with the appellant's arguments (brief,
pp. 16-25, reply brief, pp. 13-18) that the "recapture
doctrine" is not applicable in this application.
An attorney's failure to appreciate the full scope of the
invention qualifies as an error under 35 U.S.C. § 251 and is
correctable by reissue. In re Wilder, 736 F.2d 1516, 1519,
222 USPQ 369, 370-71 (Fed. Cir. 1984). Nevertheless,
"deliberate withdrawal or amendment . . . cannot be said to
involve the inadvertence or mistake contemplated by 35 U.S.C.
Section 251." Haliczer v. United States, 356 F.2d 541, 545,
148 USPQ 565, 569 (Ct. Cl. 1966). The recapture rule,
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