Appeal 2006-1865
Application 09/660,433
Patent 5,802,641
prosecution of the original patent application;7 and
(2) which patentably distinguish over the prior art.
(13)
Non-relevance of “intervening rights”
We have not overlooked a possibility that an argument might be made that
the so-called intervening rights provision relating to reissues makes jurisprudence
on the doctrine of equivalents presumption inapplicable to reissue recapture rules.
Our answer as to the argument is similar to the answer given by the Federal Circuit
in Hester with respect to whether the doctrine of equivalents surrender principles
have any applicability to reissue surrender principles. Hester squarely held that
they do. Moreover, mixing “intervening rights” with “surrender” is like mixing
apples with oranges or putting the cart before the horse. A patentee seeking a
reissue claim which is barred by recapture is not entitled to a reissue patent under
35 U.S.C. § 251. If there is no reissue patent, there can be no intervening rights.
7 For a patent containing only apparatus claims, it might be argued that reissue
method claims cannot involve surrendered subject matter where no method claim
was ever presented during prosecution of the patent. However, surrender is not
avoided merely by categorizing a claimed invention as a method rather than an
apparatus. It is the scope of a claimed invention, not its categorization, which
determines whether surrendered subject matter has crept into a reissue claim.
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