Appeal 2006-2966
Application 09/148,152
claims. In re Orita, 550 F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA
1977). This is so regardless of the propriety of the requirement. In re
Watkinson, 900 F.2d 230, 231-32, 14 USPQ2d 1407, 1408-09 (Fed. Cir.
1990).
Regarding Issue (2):
The recapture rule prevents a patentee from regaining through reissue
the subject matter that the patentee/applicant surrendered (e.g., via claim
amendment) in an effort to obtain allowance of the original patent claims.
In re Clement, 131 F.3d 1464, 1468, 45 USPQ2d 1161, 1164 (Fed. Cir.
1997). However, the recapture rule does not apply in the absence of
evidence that the applicant's amendment was an admission that the scope of
the amended claim was not in fact patentable. Id. In determining whether
surrender of subject matter has occurred, the proper inquiry is whether an
objective observer viewing the prosecution history would conclude that the
purpose of the applicant's amendment (or argument) was to overcome the
prior art and secure the patent. Kim v. Conagra Foods, Inc., 465 F.3d 1312,
1323, 80 USPQ2d 1495, 1502 (Fed. Cir. 2006).
Analysis of The Defective Reissue Declaration Rejection
Reissue Declaration Error 1
In the Reissue Declaration, the Appellant states that, through error and
without deceptive intent, the '177 patent was allowed to issue without a
generic claim (Declaration 1, Item 1). The undisputed facts presented in
support of this statement reveal that the asserted "error" was occasioned by
deliberate actions on the part of Appellant (or his attorney).
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013