Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
IV. DISCUSSION – REJECTION UNDER 35 U.S.C. § 251
A. Recapture Principles
(1)
The statute
The reissue statute expressly permits a patentee to correct an error
thus permitting patentee to obtain reissue claims broader than the originally
issued patent claims at any time within two (2) years from the date the
original patent issues. More particularly, 35 U.S.C. § 251, ¶¶ 1 and 4,
provide in pertinent part:
Whenever any patent is, through error without any deceptive
intention, deemed wholly or partly inoperative or invalid, by
reason of a defective specification or drawing, or by reason of
the patentee claiming more or less than he had a right to claim
in the patent, the Director shall, on the surrender of such patent
and the payment of the fee required by law, reissue the patent
for the invention disclosed in the original patent, and in
accordance with a new and amended application, for the
unexpired part of the term of the original patent.
No reissued patent shall be granted enlarging the scope of the
claims of the original patent unless applied for within two years
from the grant of the original patent.
(2)
Recapture is not an error
within the meaning of 35 U.S.C. § 251
What has become known as the “recapture rule,” prevents a patentee
from regaining through a reissue patent subject matter that the patentee
surrendered in an effort to obtain allowance of claims in the patent sought to
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