Appeal No. 2005-0841
Application No. 08/230,083
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.
(12)
The dissent
Our dissenting colleagues seem to be saying that the only
subject matter surrendered is that of a canceled claim. The
dissent's 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
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