Appeal No. 2002-1668 Page 10
Application No. 09/531,666
OPINION
After reviewing the record in light of the arguments presented in the appellant's
briefs and in the examiner's final rejection and answer, we conclude that the rejection is
not well taken.
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 determining that
claims 1 to 18 contained allowable subject matter was issued on September 25, 1997 in
the original application, the rule concerning reasons for allowance, 37 CFR § 1.104(e),
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
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