Appeal 2007-1119
Application 10/200,207
filing date. In fact, the term of such a patent would have been identical to
the term they now have, unless Applicants chose to forgo the benefit of
§ 120 to one or more of the parent applications. That course of action,
however, would subject them to prior art dating from 23 June 1986 (the
filing date of their Swiss application) until whatever benefit date they chose.
At oral argument, Applicants indicated that they had always intended to
keep their § 120 benefit dates.
Finally, even if the requested relief were statutory and the requested
corrections would have yielded the result Applicants seek, Applicants have
not shown that their error was one that is correctable by reissue. As the
Federal Circuit has explained, "[t]he reissue statute was not enacted as a
panacea for all patent prosecution problems, nor as a grant to the patentee of
a second opportunity to prosecute de novo his original application." In re
Weiler, 790 F.2d 1576, 1582, 229 USPQ 673, 677 (Fed. Cir. 1986). Thus,
"not every event or circumstance that might be labeled 'error' is correctable
by reissue." Id. at 1579, 229 USPQ at 677. As emphasized in a recent
decision, "Our case law holds that the deliberate action of an inventor or
attorney during prosecution generally fails to qualify as correctable error
under § 251." In re Serenkin, 479 F.3d 1359, 1362, 81 USPQ2d 2011, 2014.
In Serenkin, the court found that the applicant "intentionally and knowingly
surrendered his right to a claim of priority, in exchange for a benefit, and is
now unhappy with his choice." 479 F.3d at 1364, 81 USPQ2d at 2014. The
court distinguished a number of cases, including several cited by Applicants
to us, as being based on errors that "were the result of inadvertence,
accident, or mistake, which are clearly appropriate bases for reissue. . . . The
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