Appeal No. 2005-0841
Application No. 08/230,083
those who before opposed his pretensions (if, indeed, the
latter have not been silenced by purchase), and procures
a valuable monopoly to which he has not the slightest
title. We have more than once expressed our
disapprobation of this practice. As before remarked, we
consider it extremely doubtful whether reissued letters
can be sustained in any case where they contain claims
that have once been formally disclaimed by the patentee,
or rejected with his acquiescence, and he has consented
to such rejection in order to obtain his letters-patent.
Under such circumstances, the rejection of the claim can
in no just sense be regarded as a matter of inadvertence
or mistake. Even though it was such, the applicant
should seem to be estopped from setting it up on an
application for a reissue.
In Dobson, 137 U.S. at 265-66, the Supreme Court stated:
A reissue is an amendment, and cannot be allowed
unless the imperfections in the original patent arose
without fraud, and from inadvertence, accident, or
mistake, (Rev. St. § 4916;) hence the reissue cannot be
permitted to enlarge the claims of the original patent by
including matter once intentionally omitted.
Acquiescence in the rejection of a claim, its withdrawal
by amendment, either to save the application or to escape
an interference, the acceptance of a patent containing
limitations imposed by the patent-office, which narrow
the scope of the invention as at first described and
claimed, are instances of such omission. [Citations
omitted]. It is clear that the claim of this reissue is
not covered by the original patent, and it appears that,
before the issue of the latter, it was passed upon and
rejected, was withdrawn and erased, an interference was
dissolved upon condition of the amendment, and the issue
of the original letters was predicated upon its
abandonment. There is no room for the contention that
there was any inadvertence, accident, or mistake in the
premises. Nor, in the light of these protracted
proceedings in the patent-office, can the applicant be
permitted to treat the deliberate acts of his attorney as
the result of inadvertence, accident, or mistake. The
repeated official decisions and orders, and the repeated
efforts to maintain this claim without success, during
this long struggle, indicate anything but negligence or
inadvertence on the part of the solicitors employed.
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