Appeal No. 2006-2248
Application No. 10/158,618
Under these circumstances, the record of this appeal amply supports a
determination that the Appellants surrendered the subject matter defined by the
amended and ultimately canceled original application claims 1-10 and that this
surrendered subject matter has crept into the reissue claims under consideration.
See Clement, 131 F.3d at 1469, 45 USPQ at 1164.
In support of their non-recapture position, the Appellants argue that
“Applicant never intended to surrender the subject matter in claims 1 to 10 of the
‘880 Application and always intended to file a continuation application with these
claims” (Brief, page 7). However, this unfulfilled intent does not negative the
subjective inference of surrender created by the Appellants’ deliberate amendment
and cancellation of the original application claims 1-10. Indeed, it is well settled
that the intentional omission of subject matter from an original application
combined with the plan to claim it in a subsequent application does not constitute
“error” under 35 U.S.C. § 251. In re Mead, 581 F.2d 251, 256-57, 198 USPQ 412,
417-18 (CCPA 1978). Compare In re Watkinson, 900 F.2d 230, 231-32, 14
USPQ2d 1407, 1409-10 (Fed. Cir. 1990); In re Orita, 550 F.2d 1277, 1280-81, 193
USPQ 145, 149 (CCPA 1977).
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