Appeal No. 2007-0441
Reissue Application 10/155,945
Patent 5,311,959
1 We have not overlooked the fact that § 251 is to be applied in an
2 equitable manner. Why should equity concern us in this case? Because, the
3 amendment which causes the concern in this case was made by the
4 Examiner (not the current Examiner) in an Examiner’s Amendment. As
5 employees of the Office, we all try to avoid mistakes. However, at the end
6 of the day, because we are human, we all make mistakes. We know the
7 Examiner who made the amendment knows that an element cannot be both
8 parallel and perpendicular to another element. Nevertheless, the mistake
9 was made.
10 On the other hand, the Examiner advised Applicant that if the
11 Examiner’s Amendment was unacceptable, Applicant could file an
12 additional amendment under 37 C.F.R. § 312, which authorizes amendment
13 after a notice of allowance has been issued.
14 Apparently Applicant did not review the amendment before the patent
15 issued. Likewise, the loose end in patent claim 1 did not surface within the
16 2-year period during which a reissued could be applied for without any
17 concern for enlargement of scope.
18 To the extent we need to do so, we feel comfortable balancing the
19 equities in this case against the Applicant. Apart from the explicit warning
20 in the Examiner’s Amendment accompanied by instruction on “what to do,”
21 we agree with the philosophy expressed our appellate reviewing court in the
22 context of a certificate of correction issue: “Moreover, it does not seem to
23 us to be asking too much to expect a patentee to check a patent when it is
24 issued in order to determine whether it contains any errors that require the
25 issuance of a certificate of correction. In this case, the omission of the
12
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