Appeal No. 1999-0323 Page 5
Application No. 08/079,504
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 doctrine,
therefore, prevents a patentee from regaining through reissue
the subject matter that he surrendered in an effort to obtain
allowance of the original claims. See Mentor Corp. v.
Coloplast, Inc., 998 F.2d 992, 995, 27 USPQ2d 1521, 1524 (Fed.
Cir. 1993). Under this rule, claims that are "broader than
the original patent claims in a manner directly pertinent to
the subject matter surrendered during prosecution" are
impermissible. Id. at 996, 27 USPQ2d at 1525. In addition,
to determine whether an applicant surrendered particular
subject matter, we look to the prosecution history for
arguments and changes to the claims made in an effort to
overcome a prior art rejection. See Mentor, 998 F.2d at
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007