Appeal 2007-1119
Application 10/200,207
(Examiner's Answer, mailed 29 September 2006, at 3; Final Rejection
mailed 3 September 2004, at 2.)
20. MPEP § 1405 reads in relevant part:
The maximum term of the original patent is fixed at the time
the patent is granted. While the term may be subsequently
shortened, e.g., through the filing of a terminal disclaimer, it
cannot be extended through the filing of a reissue.
Accordingly, a deletion in a reissue application of an earlier-
obtained benefit claim under 35 U.S.C. 120 will not operate to
lengthen the term of the patent to be reissued.
(MPEP, 8th Ed., Rev. 5 (August 2006)3 (emphasis original).)
Applicants' Argument
21. Applicants argue that the purpose of the reissue statute is remedial,
and errors without deceptive intent are correctable. (Br. at 8.)
22. More specifically, Applicants argue that their error was to file CPAs
under 37 C.F.R. § 1.53(d), instead of continuing applications under
37 C.F.R. § 1.53(b). (Br. at 9.)
23. Appellants argue that had they filed under Rule 53(b), they would
have been entitled to a term of 17 years from the date of issue under the
terms of 35 U.S.C. § 154(c). (Br. at 2 and 9; clarified at oral argument.)
24. Applicants urge that the examiner and the MPEP fail to explain why
Applicants' error "is not an 'error without any deceptive intent' unequivocally
falling within in patent statute [35 U.S.C. § 251]." (Br. at 7.)
3 MPEP § 1405 has not been amended since Rev. 2, the version used by the
Examiner at the time of the rejection.
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