Appeal No. 2005-0841
Application No. 08/230,083
Byers, 230 F.2d at 454-56, 109 USPQ at 55-56, stated that
[t]he issue to be determined in here is whether the
failure to obtain, in the patent sought to be reissued,
claims corresponding to those involved in the present
appeal was due to "error" within the meaning of the
sentence just quoted [35 U.S.C. § 251, first paragraph].
The use of the word "error" in that sentence instead of
the words "inadvertence, accident or mistake," which
appeared in the corresponding section, 35 U.S.C. § 64,
Section 4916 R.S., of the patent statutes prior to the
recodification of 1952, does not involve a substantive
change, and the same type of error is necessary to
justify a reissue after the enactment of the Patent Act
of 1952 as before. [Citations omitted]. Accordingly,
decisions as to what constituted inadvertence, accident
or mistake under the prior law are pertinent here.
. . . .
Original claim 20 was amended by substituting
"coplanar" for flat and by including a further limitation
that the cavity was approximately one-third of the
diameter of the base and, as so amended, it was allowed.
While claim 20 was not technically canceled, the
amendment of that claim by the inclusion of an additional
limitation had exactly the same effect as if the claim as
originally presented had been canceled and replaced by a
new claim including that limitation. So far as the right
to reissue the patent is concerned, therefore, the case
is to be treated as if original claim 20 had been
canceled and replaced by the claim on which the patent
was granted.
While the record does not show the specific
circumstances under which claim 20 was amended, it was
stated by the Board of Appeals that such action was a
"deliberate amending of claim 20 to secure the patent"
and, in the absence of any showing to the contrary, that
statement will be accepted as accurate. [Citations
omitted]. Moreover, the board's statement is in accord
with that in the appellant's brief that the examiner
agreed to allow the claim of appellant's patent "only on
condition that this claim be amended to recite not only
A-21
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