Appeal No. 2005-0841
Application No. 08/230,083
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includes the [subject] matter withdrawn."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).
(2)
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
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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