Appeal No. 2005-0841
Application No. 08/230,083
intentionally omitted or abandoned the claimed subject matter.
Thus, the court found that while appellant acted "deliberately" he
did so in error. This error, in view of the facts of record, was
held to be an "error without any deceptive intention" which
entitled the appellant to secure a reissue of his patent under the
provisions of 35 U.S.C. § 251.
The court in In re Richman, 409 F.2d 269, 161 USPQ 359, (CCPA
1969) reversed a rejection under 35 U.S.C. § 251 wherein the claims
rejected were narrower in scope than the cancelled claims in the
application which resulted in the appellant's patent but were
broader than the patent claims. The court set forth (id. at 274,
161 USPQ at 362) that the recapture question raised in the appeal
was whether the appealed claims are of the same scope as the
cancelled claims, not whether they lack some specific recitation
absent from the cancelled claims but included in the patent claims.
The court stated (id. at 274-75, 161 USPQ at 363) that
[w]e therefore find neither decision [Wesseler and
Shepard] to be authority for the proposition that a
limitation added to a claim in obtaining its allowance
cannot be broadened, under present statutory law, by
reissue if the limitation turns out to be more
restrictive than the prior art required. Certainly one
might err without deceptive intention in adding a
particular limitation where a less specific limitation
regarding the same feature, or an added limitation
relative to another element, would have been sufficient
to render the claims patentable over the prior art.
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