Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
(2) which patentably distinguish over the prior art.
(13)
Non-relevance of “intervening rights”
We have not overlooked a possibility that an argument might be made
that the so-called intervening rights provision relating to reissues makes
jurisprudence on the doctrine of equivalents presumption inapplicable to
reissue recapture rules. Our answer as to the argument is similar to the
answer given by the Federal Circuit in Hester with respect to whether the
doctrine of equivalents surrender principles have any applicability to reissue
surrender principles. Hester squarely held that they do. Moreover, mixing
“intervening rights” with “surrender” is like mixing apples with oranges or
putting the cart before the horse. A patentee seeking a reissue claim which
is barred by recapture is not entitled to a reissue patent under 35 U.S.C.
§ 251. If there is no reissue patent, there can be no intervening rights.
(14)
Public Notice
We believe that any recapture analysis must be bottomed principally
on a “public notice” analysis which can occur only after a record becomes
“fixed.” In the case of a patent, the “claims” and the “prosecution history”
become fixed at the time the patent is issued--not during “fluid” patent
invention, not its categorization, which determines whether surrendered
subject matter has crept into a reissue claim.
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