Appeal 2006-2966
Application 09/148,152
The Appellant is incorrect in stating that "[t]he facts of the present
case fall into the situation described by the court in Doyle" (Further Supple.
Br. 2). As a basis for its holding in Doyle, the court repeatedly emphasized
that the generic or linking claims of Dr. Doyle's reissue application had
never been submitted for prosecution in the original patent application. See
Doyle, 293 F.3d at 1358, 63 USPQ at 1164 ("Dr. Doyle simply seeks a
broadening reissue of his '595 patent to cover material that he invented and
disclosed, but inadvertently failed to claim in his issued patent;" emphasis
added) and 293 F.3d at 1360, 63 USPQ at 1165 ("the applicant [Dr. Doyle]
never asserted the reissue claims or anything similar to them in his original
application").
In contrast, Appellant submitted generic claim 17 for prosecution in
the '177 patent application and deliberately authorized an amendment by the
Examiner of the claim to limit or narrow its coverage to the elected species
only. By now seeking reissue of appealed generic claim 10 which
corresponds to former generic claim 17, the Appellant clearly is attempting
to retract his deliberate decision made during prosecution of the '177 patent
application. This deliberate decision is not an error that is correctable under
§ 251. Serenkin, 479 F.3d at 1362-63, 81 USPQ2d at 2014.
For the above-stated reasons, the facts presented in the Reissue
Declaration do not establish that issuance of the '177 patent without a
generic claim was due to an error which can be corrected by reissue under
35 U.S.C. § 251.
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