Appeal No. 2005-0841
Application No. 08/230,083
must be adequately supported by the circumstances
detailed in 35 U.S.C. § 251 (1976) and in the
implementing regulations, 37 C.F.R. § 1.175 (1982). The
Government asserts that the nature of error that will
justify reissue is narrowly circumscribed to ensure that
reissue remains the exception and not the rule. Relying
on Edward Miller & Co. v. Bridgeport Brass Co., the
Government contends that "a mere error of judgment" is
not adequate to support reissue; rather the error must be
"a real bona fide mistake, inadvertently committed."
The 1952 revision of the patent laws made no
substantive change in the definition of error under
section 251. While deliberate cancellation of a claim
cannot ordinarily be considered error, the CCPA has
repeatedly held that the deliberate cancellation of
claims may constitute error, if it occurs without
deceptive intent. In In re Petrow, the CCPA went so far
as to state that error is sufficient where the deliberate
cancellation of claims does not amount to an admission
that the reissue claims were not patentable at the time
the original claims were canceled. Similarly, in In re
Wesseler, the CCPA stated that error is established where
there is no evidence that the appellant intentionally
omitted or abandoned the claimed subject matter. Thus,
the CCPA has construed the term error under section 251
broadly.
The Ninth Circuit employed a more rigid standard in
Riley v. Broadway-Hale Stores, Inc. stating: "when the
chief element added by reissue has been abandoned while
seeking the original patent, the reissue is void." The
trial judge sought to determine whether Ball had made a
deliberate judgment that claims of substantially the same
scope as the new reissue claims would have been
unpatentable. The Government, arguing from Riley,
submits that the trial judge's approach loses sight of
the feature given up by a patentee in order to secure the
original patent. We decline to adopt the rigid standard
applied in Riley, in favor of the more liberal approach
taken by the CCPA. Petrow clearly establishes the
vitality of the standard employed by the trial judge
under this court's precedent.
Further, the Government argues that we need not reach
the issue of claim scope because the sufficiency of error
is a threshold issue. While claim scope is no oracle on
intent, the Government fails to apprehend its role.
A-27
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