Appeal No. 2005-0841
Application No. 08/230,083
Appendix 8
The purpose of the reissue recapture rule was expressed by
Justice Bradley for the court, in Leggett, 101 U.S. at 259-60 as
follows:
It is obvious, on inspection, that the first and
second of these claims are for substantially the same
inventions which were disclaimed before the extension,
and are for different inventions from that which was
included in and secured by the letters-patent as
extended. The court below deemed this, amongst other
things, a fatal objection to the validity of the reissued
letters-patent. We agree with the Circuit Court. We
think it was a manifest error of the commissioner, in the
reissue, to allow to the patentee a claim for an
invention different from that which was described in the
surrendered letters, and which he had thus expressly
disclaimed. The pretence that an 'error had arisen by
inadvertence, accident, or mistake,' within the meaning
of the patent law, was too bald for consideration. The
very question of the validity of these claims had just
been considered and decided with the acquiescence and the
express disclaimer of the patentee. If, in any case,
where an applicant for letters-patent, in order to obtain
the issue thereof, disclaims a particular invention, or
acquiesces in the rejection of a claim thereto, a reissue
containing such claim is valid (which we greatly doubt),
it certainly cannot be sustained in this case. The
allowance of claims once formally abandoned by the
applicant, in order to get his letters-patent through, is
the occasion of immense frauds against the public. It
not unfrequently happens that, after an application has
been carefully examined and compared with previous
inventions, and after the claims which such an
examination renders admissible have been settled with the
acquiescence of the applicant, he, or his assignee, when
the investigation is forgotten and perhaps new officers
have been appointed, comes back to the Patent Office,
and, under the pretence of inadvertence and mistake in
the first specification, gets inserted into reissued
letters all that had been previously rejected. In this
manner, without an appeal, he gets the first decision of
the office reversed, steals a march on the public, and on
A-19
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