Appeal No. 2001-1041 Page 9
Application No. 09/219,475
35 U.S.C. § 251 provides that a patent may be reissued if it
is deemed wholly or partly inoperative or invalid "through error
without any deceptive intention." Under the recapture rule,
there cannot be said to be an "error" within the meaning of 35
U.S.C. § 251 "[i]f the patentee tries to recapture what he or she
previously surrendered in order to obtain allowance of original
patent claims." Mentor Corp. v. Coloplast Inc., 998 F.2d 992,
995, 27 USPQ2d 1521, 1524 (Fed. Cir. 1993).
The reissue statute is "based on fundamental principles of
equity and fairness, and should be construed liberally." Hester
Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 1479, 46 USPQ2d
1641, 1647 (Fed. Cir. 1998), quoting In re Weiler, 790 F.2d 1576,
1579, 229 USPQ 673, 675 (Fed. Cir. 1986). When the Office action
allowing the claims in the original application was issued on May
13, 1996, the rule concerning reasons for allowance, 37 CFR
§ 1.109, provided in its last two sentences (emphasis added):
The applicant or patent owner may file a statement
commenting on the reasons for allowance within such time as
may be specified by the examiner. Failure to file such a
statement shall not give rise to any implication that the
applicant or patent owner agrees with or acquiesces in the
reasoning of the examiner.
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