Appeal 2005-0801
Application 09/848,628
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)
The concurrences
Our colleagues seem to be saying that the only subject matter
surrendered is that of a canceled claim. This analysis looks a lot like an
attempt to create a per se rule.
With all due respect, 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 are
presented during prosecution. When an amendment is presented, it is the
applicant that should be in the best position to analyze what subject matter
(i.e., territory to use the Supreme Court’s language) is being surrendered.
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