Appeal No. 2005-0841
Application No. 08/230,083
The court in Wadlinger, 496 F.2d at 1207-08, 181 USPQ at 832
stated that
in its decisions both before and after Wesseler, has made
it clear that a reissue applicant is, at most, prevented
by interpretations of the language of § 251, and its
predecessor statute R.S. 4916, from obtaining claims
which are of the same scope as the claims previously
cancelled in the original application. As for obtaining
claims on reissue which are different, no prohibition
arises merely because of the language of the reissue
statute. Still apropos and basic is our statement in
Wesseler [151 USPQ at 348]:
We think the term "error," arising as it does
in a remedial provision designed to advance
both the rights of the public and the inventor,
is to be interpreted as Congress has stated it,
"error without any deceptive intention," and in
light of Supreme Court decisions favoring the
liberal construction of reissue statutes in
order to secure to inventors protection for
what they have actually invented.
See In re Richman, 409 F.2d 269, 56 CCPA 1083 [161 USPQ
359] (1969), holding there was "error without any
deceptive intention" under § 251 where the reissue claims
differed in scope from cancelled claims and also found,
as in Wesseler, that "while appellant acted
'deliberately', he did so in error."
The court in Wadlinger reversed the rejection under 35 U.S.C. § 251
of claims which were narrower in scope than the cancelled claims in
the application but were broader in scope than the patent claims.
The Federal Circuit first discussed the recapture rule in
Ball, 729 F.2d at 1435-37, 221 USPQ at 293-95. The Court provided
that
[r]eissue is not a substitute for Patent Office appeal
procedures. Reissue is an extraordinary procedure and
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