Appeal No. 2003-0124
Application No. 09/487,832
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 122 S.Ct.
1831, 1837, 62 USPQ2d 1705, 1709-10 (2002). The United States
Supreme Court also acknowledged that patent applicants should not
be presumed to have had more foresight in making such amendments
than an applicant whose application was granted without
amendments having been submitted. Id. at 1841, 62 USPQ2d at
1712.
Moreover, with respect to the reissue statute, as recently
explained by our reviewing court in In re Doyle, 293 F.3d 1355,
1358, 63 USPQ2d 1161, 1164 (Fed. Cir. 2002),
[b]y its terms section 251 restricts reissue
to situations in which an error occurred –
situations that include the patentee having
"claim[ed] more or less than he had a right
to claim in the patent." "The statute is
remedial in nature, based on fundamental
principles of equity and fairness, and should
be construed liberally." In re Weiler,
790 F.2d 1576, 1579, 229 USPQ 673, 675 (Fed.
Cir. 1986).
We are also mindful, however, of the admonition that
[e]rror under the reissue statute does not
include a deliberate decision to surrender
specific subject matter in order to overcome
prior art, a decision which in light of
subsequent developments in the marketplace
might be regretted. It is precisely because
the patentee amended his claims to overcome
prior art that a member of the public is
entitled to occupy the space abandoned by the
1818
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