Appeal 2007-1432
Application 09/141,186
Patent 5,549,673
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
prosecution where claims and arguments can change depending on the
circumstances, e.g., prior art applied and amendments to claims. It is from a
fixed perspective that the public (not the patentee) must make an analysis of
what the patentee surrendered during prosecution. Moreover, Appellant (not
the public) control what amendments and arguments are presented during
prosecution. When an amendment or argument is presented, it is the
Appellant that should be in the best position to analyze what subject matter
(i.e., territory to use the Supreme Court’s language) is being surrendered (or
explain why the reissue claims are materially narrowed).
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