Appeal No. 2005-0841
Application No. 08/230,083
the three-to-one relationship between the cavity and the
base, but also the specific definition of the cone
angles." It is clear, therefore, that the appellant
deliberately relinquished claim 20 as it originally
stood, in order to obtain the patent.
It is well settled that the deliberate withdrawal or
amendment of a claim in order to obtain a patent does not
involve inadvertence, accident or mistake and is not an
error of the kind which will justify a reissue of the
patent including the matter withdrawn. . . .
. . . .
It is evident that since the deliberate cancellation
of a claim in order to obtain a patent constitutes a bar
to the obtaining of the same claim by reissue, it
necessarily also constitutes a bar to the obtaining of a
claim which differs from that canceled only in being
broader.
Ex parte Feissel, 131 USPQ 252, 254 (Bd. App. 1960)
provided that
[u]pon careful consideration of the issues involved,
we do not agree with the examiner as to the instant
rejection. We do not have here before us a situation
falling strictly within the general rule that where a
claim in a first application is deliberately cancelled or
restricted in response to a rejection thereof on prior
art, the cancelled claim or a claim merely without the
restrictive amendment that was added cannot be obtained
in a reissue. Nor does the instant situation involve a
claim in a reissue application which differs from that
cancelled in the first application only in being broader,
which would be barred as denoted in In re Byers, 43 CCPA
803, 109 USPQ 53, 230 F.2d 451, 1956 C.D. 183, 705 O.G.
444. Here, in the original application, the claim which
was in effect first cancelled contained neither the
amplifier limitation nor the further limitation referred
to by the examiner, while the claim that was later
cancelled contained only the amplifier limitation. There
was no cancellation in that application of any claim of
the scope of that here before us on appeal, namely,
containing only said further limitation but not the
A-22
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