Appeal No. 2004-0659
Application No. 09/111,978
If a patentee attempts to “recapture” what the patentee previously surrendered in
order to obtain allowance of original patent claims, that “deliberate withdrawal or
amendment ... cannot be said to involve the inadvertence or mistake contemplated by
35 U.S.C. § 251, and is not an error of the kind which will justify the granting of a reissue
patent which includes the [subject] matter withdrawn.” Mentor Corp. v.Coloplast, Inc.,
998 F.2d 992, 995, 27 USPQ2d 1521, 1524 (Fed. Cir. 1993), quoting from Haliczer v.
United States, 356 F.2d 541, 545, 148 USPQ 565, 569 (Ct. Cl. 1966).4 See also Hester
Industries Inc. v. Stein, Inc., 142 F.3d 1472, 1480, 46 USPQ2d 1641, 1647 (Fed. Cir.),
cert. denied, 525 U.S. 947 (1998).
(3)
IN RE CLEMENT
The Federal Circuit’s opinion in Clement discusses a three-step test for analyzing
recapture.
Step 1 involves a determination of whether and in what aspect any claims sought
to be reissued are broader than the patent claims. The Federal Circuit reasoned that a
reissue application claim deleting a limitation or element from a patent claim is broader
as to that limitation’s or element’s aspect. 131 F.3d at 1468, 45 USPQ2d at 1164.
Step 2 involves a determination of whether the broader aspects of the reissue
application claims relate to surrendered subject matter. 131 F.3d at 1468-69, 45 USPQ2d
at 1164. In this respect, review of arguments and/or amendments during the prosecution
history of the application, which matured into the patent sought to be reissued, is
appropriate. In reviewing the prosecution history, the Federal Circuit observed that
“[d]eliberately canceling or amending a claim in an effort to overcome a [prior art]
reference strongly suggests that the applicant admits that the scope of the claim before
cancellation or amendment is unpatentable.” 131 F.3d at 1469, 45 USPQ2d at 1164.
4 Haliczer is binding precedent. See South Corp. v. United States, 690 F.2d 1368, 215
USPQ 657 (Fed. Cir. 1982) (in banc) (decisions of the former U.S. Court of Customs and
Patent Appeals and former U.S. Court of Claims decisions are binding precedent).
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