Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
be reissued. In re Clement, 131 F.3d 1464, 1468, 45 USPQ2d 1161, 1164
(Fed. Cir. 1997).
If a patentee attempts to “recapture” what the patentee previously
surrendered in order to obtain allowance of original patent claims, that
“deliberate withdrawal or amendment ... cannot be said to involve the
inadvertence or mistake contemplated by 35 U.S.C. § 251, and is not an
error of the kind which will justify the granting of a reissue patent which
includes the [subject] matter withdrawn.” Mentor Corp. v. Coloplast, Inc.,
998 F.2d 992, 995, 27 USPQ2d 1521, 1524 (Fed. Cir. 1993), quoting from
Haliczer v. United States, 356 F.2d 541, 545, 148 USPQ 565, 569 (Ct. Cl.
1966).3 See also Hester Industries Inc. v. Stein, Inc., 142 F.3d 1472, 1480,
46 USPQ2d 1641, 1647 (Fed. Cir. 1998).
(3)
In re Clement
The Federal Circuit’s opinion in Clement discusses a three-step test
for analyzing recapture.
Step 1 involves a determination of whether and in what aspect any
claims sought to be reissued are broader than the patent claims. The Federal
Circuit reasoned that a reissue application claim deleting a limitation or
3 Haliczer is binding precedent. See South Corp. v. United States, 690
F.2d 1368, 215 USPQ 657 (Fed. Cir. 1982) (in banc) (decisions of the
former U.S. Court of Customs and Patent Appeals and former U.S. Court of
Claims decisions are binding precedent).
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