Appeal No. 2005-0642
Application No. 09/568,278
have any applicability to reissue surrender principles. Hester squarely held that
they do. Moreover, mixing “intervening rights” with “surrender” is like mixing
apples with oranges or putting the cart before the horse. A patentee seeking a
reissue claim which is barred by recapture is not entitled to a reissue patent under
35 U.S.C. § 251. If there is no reissue patent, there can be no intervening rights.
(13)
Public Notice
We believe that any recapture analysis must be bottomed principally on a
“public notice” analysis which can occur only after a record becomes “fixed.” In
the case of a patent, the “claims” and the “prosecution history” become fixed at the
time the patent is issued--not during “fluid” patent prosecution where claims and
arguments can change depending on the circumstances, e.g., prior art applied and
amendments to claims. It is from a fixed perspective that the public (not the
patentee) must make an analysis of what the patentee surrendered during
prosecution. Moreover, an applicant (not the public) controls what amendments
and arguments are presented during prosecution. When an amendment or
argument is presented, it is the applicant that should be in the best position to
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