Appeal No. 1998-2911
Application 08/314,345
resulted in the issuance of the patent. In rejecting claims
35 and 36, the examiner takes the position that
the “parallel planes” limitation [was] deliberately
added to claims in the application for the patent .
. . upon which the present reissue . . . is based to
overcome prior art and render those claims
patentable. “Error” within the meaning of 35 U.S.C.
§ 251 does not include deliberate decisions to
surrender specific subject matter in order to
overcome prior art. Appellant’s [sic]
representative voluntarily added the “parallel
planes” limitation to the claims in the after final
amendment of April 8, 1992 in order to over come the
prior art and define the patentable structure of the
applicants[’] invention. Therefore, the reissue
claims are an attempt to impermissibly recapture
what the applicants surrendered in the original
prosecution [answer, page 4].
The appellants, on the other hand, submit that the
prosecution history of the application which matured into the
patent clearly demonstrates that the “in parallel planes”
language absent from reissue claims 35 and 36 was not added to
patent claims 1 and 2 to overcome the prior art.
The recapture rule rooted in 35 U.S.C. § 251 prevents a
patentee from regaining through reissue subject matter
surrendered in an effort to obtain allowance of original
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