Judges: Lourie (author), Schall, Gajarsa

[Appealed from the Board]

In re Serenkin, No. 06-1242 (Fed. Cir. Mar. 6, 2007), the Federal Circuit affirmed the Board’s sustaining of the examiner’s rejection of claims 1-11 of Reissue Application No. 10/134,550 (“the ’550 application”). After failing to include drawings in a PCT application submitted to the PTO in its capacity as the United States Receiving Office (“USRO”), Arnold Serenkin, the applicant, chose to accept a later filing date and forego a priority claim to his provisional application in exchange for the ability to submit the missing drawings. After issuance of a U.S. patent in the national stage of the PCT application, Serenkin attempted to add the priority claim through reissue.

The examiner issued a final rejection of the application, concluding that the error identified by Serenkin is not one upon which a reissue can be based. The Board sustained the rejection because, under PCT law and applicable U.S. statutes, Serenkin failed to perfect his claim of priority and that failure was a deliberate choice. Serenkin appealed.

The Federal Circuit held that the Board properly concluded that it is not permissible for Serenkin to claim the benefit of the earlier filing date through the reissue process. The Court explained that the action for which the patent applicant sought correction—selecting one of two prosecution options presented by the PTO— was a “conscious decision” and a “deliberate choice,” not an error in accordance with 35 U.S.C. § 251.

“[T]he deliberate action of an inventor or attorney during prosecution generally fails to qualify as a correctable error under § 251.”

Slip op. at 7. The remedial function of § 251 is not without limits. Consistent with precedent, the Federal Circuit explained that Serenkin cannot rely on the reissue statute in order to undo the consequences of deliberate choices made during prosecution. In this case, Serenkin did not fail to perfect priority, but intentionally and knowingly surrendered his right to priority. The Court distinguished this case from precedent wherein the Court determined that the reissue process was appropriate for seeking claims narrower in scope than claims deliberately canceled during prosecution. The Court explained that Serenkin is not using reissue to obtain claims that differ in scope from claims that he previously cancelled. The nature of the so-called errors differ greatly. Thus, the Court concluded that the Board did not err in sustaining the examiner’s rejection, and affirmed.