Appeal 2005-0801
Application 09/848,628
(2)
Recapture is not an error
within the meaning of 35 U.S.C. § 251
What has become known as the “recapture rule,” prevents a patentee
from regaining through a reissue patent subject matter that the patentee
surrendered in an effort to obtain allowance of claims in the patent sought to
be reissued. In re Clement, 131 F.3d 1464, 1468, 45 U.S.P.Q.2d 1161, 1164
(Fed. Cir. 1997).
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includes the [subject] matter withdrawn.”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 U.S.P.Q.2d 1521, 1524 (Fed. Cir. 1993), quoting from
Haliczer v. United States, 356 F.2d 541, 545, 148 U.S.P.Q. 565, 569 (Ct. Cl.
1966).13 See also Hester Industries Inc. v. Stein, Inc., 142 F.3d 1472, 1480,
46 U.S.P.Q.2d 1641, 1647 (Fed. Cir.), cert. denied, 525 U.S. 947 (1998). (3)
13 Haliczer is binding precedent. See South Corp. v. United States, 690
F.2d 1368, 215 U.S.P.Q. 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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