Ex Parte KRAUS - Page 139



          Appeal No. 2005-0841                                                        
          Application No. 08/230,083                                                  

          held that reissue claim 49 was broader than it was narrower in a            
          manner directly pertinent to the subject matter that Clement                
          surrendered throughout the prosecution and accordingly the court            
          affirmed the board's decision to sustain the examiner's rejection           
          of claim 49 under 35 U.S.C. § 251 based on the recapture rule.              
               The court in Hester, 142 F.3d at 1479-84, 46 USPQ2d at                 
          1647-51 provided:                                                           
               In considering the "error" requirement, we keep in                     
               mind that the reissue statute is "based on fundamental                 
               principles of equity and fairness, and should be                       
               construed liberally."   In re Weiler, 790 F.2d 1576,                   
               1579, 229 USPQ 673, 675 (Fed. Cir. 1986).  We also keep                
               in mind that "not every event or circumstance that might               
               be labeled 'error' is correctable by reissue."  Id.                    
               Indeed, the reissue procedure does not give the patentee               
               the right "to prosecute de novo his original                           
               application."  Id. at 1582, 790 F.2d 1576, 229 USPQ at                 
               677; see also Mentor Corp. v. Coloplast, Inc., 998 F.2d                
               992, 995, 27 USPQ2d 1521, 1524 (Fed. Cir. 1993).                       
               One of the most commonly asserted "errors" in support                  
               of a broadening reissue is the failure of the patentee's               
               attorney to appreciate the full scope of the invention                 
               during the prosecution of the original patent                          
               application.  See Amos, 953 F.2d at 616, 21 USPQ2d at                  
               1273; In re Wilder, 736 F.2d 1516, 1519, 222 USPQ 369,                 
               371 (Fed. Cir. 1984).  This form of error has generally                
               been accepted as sufficient to satisfy the "error"                     
               requirement of § 251. See Clement, 131 F.3d at 1468, 45                
               USPQ2d at 1163; Wilder, 736 F.2d at 1519, 222 USPQ at                  
               371. Williams asserted this form of error as the basis                 
               for his reissue applications, and the Patent Office                    
               accepted his assertion as adequate.                                    
               However, the district court concluded that there was                   
               no such error by Williams' attorney.  Hester, 963 F.                   
               Supp. at 1411.  In reaching this conclusion, the court                 
               was particularly persuaded by the prosecution history of               
               the original patent. The court concluded that the                      
               attorney's repeated attempts to distinguish Williams'                  

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