Appeal No. 2005-0841
Application No. 08/230,083
uncommon defect in claiming an invention. In re Wilder,
736 F.2d 1516, 1519, 222 USPQ 369, 371 (Fed. Cir. 1984),
cert. denied, 469 U.S. 1209 . . . (1985). However, the
reissue procedure does not give the patentee "a second
opportunity to prosecute de novo his original
application," In re Weiler, 790 F.2d 1576, 1582,
229 USPQ 673, 677 (Fed. Cir. 1986).
The deliberate cancellation of a claim of an
original application in order to secure a
patent cannot ordinarily be said to be an
"error" and will in most cases prevent the
applicant from obtaining the cancelled claim by
reissue. The extent to which it may also
prevent him from obtaining other claims
differing in form or substance from that
cancelled necessarily depends upon the facts in
each case and particularly on the reasons for
the cancellation.
In re Willingham, 282 F.2d 353, 357, 127 USPQ 211, 215
(CCPA 1960).
If a patentee tries to recapture what he or she
previously surrendered in order to obtain allowance of
original patent claims, that "deliberate withdrawal or
amendment . . . cannot be said to involve the
inadvertence or mistake contemplated by 35 U.S.C. § 251,
and is not an error of the kind which will justify the
granting of a reissue patent which includes the matter
withdrawn." Haliczer v. United States, 356 F.2d 541,
545, 148 USPQ 565, 569 (Ct. Cl. 1966). "The recapture
rule bars the patentee from acquiring, through reissue,
claims that are of the same or of broader scope than
those claims that were cancelled from the original
application." Ball Corp., 729 F.2d at 1436, 221 USPQ at
295 (citations omitted).
The reissue claims before the court in Mentor were narrower in some
respects than the canceled claims and broader in others respects
than the canceled claims. The court in Mentor asserted (998 F.2d
at 996, 27 USPQ2d at 1525) that reissue claims that are broader in
certain respects and narrower in others than the surrendered
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