Appeal 2006-2966
Application 09/148,152
These deliberate actions included agreement with the Examiner's
requirement for an election of species to be prosecuted in the '177 patent
application with non-elected species to be prosecuted in divisional
applications (id. at Items 1.a. and 1.b.).2 Similarly, Appellant (or his
attorney) deliberately agreed to an Examiner's amendment that limited or
narrowed generic claim 17 to the elected species only (id. at Item 1.e.).
A correctable § 251 error does not include these deliberate decisions
by Appellant whereby the '177 patent was allowed to issue with elected
species claims only (i.e., without a generic claim). Orita, 550 F.2d at 1280,
193 USPQ at 148. These deliberate choices do not comprise error
correctable by reissue regardless of the propriety of the election requirement
or claim amendment made by the Examiner. Watkinson, 900 F.2d at 231-32,
14 USPQ2d at 1408-09. There is a distinction between a § 251 error and a
deliberate choice subsequently found to be disadvantageous. Serenkin,
479 F.3d at 1364, 81 USPQ2d at 2015.
Appellant cites Ex parte Holt, 214 USPQ 381 (Bd. App. 1982), "as
standing for the proposition that failure to take other remedial action, such as
filing a divisional or continuation application, should not adversely affect an
applicant's right to reissue" (Supple. Appeal Brief, filed May 22, 2007, 1;
see also Revised Appeal Brief, filed April 25, 2000, (hereinafter Br.) 10).
Holt involved an improper rejection of a Markush claim under 35 U.S.C.
§ 121. The Board found that applicant's failure to recognize the impropriety
2 It might be presumed that no such divisional applications were filed and
that such non-filing occurred by inadvertence and without deceptive intent
as in Orita, 550 F.2d 1277, 193 USPQ 145. However, the record is silent on
these matters.
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