Summary: CAFC affirmed rejection of Appellants’ reissue application

Case: In re Dinsmore, No. 2013-1637 (Fed. Cir. June 10, 2014) (precedential). On appeal from Patent Trial and Appeal Board in Serial No. 12/137,662. Before Taranto, Bryson, and Hughes.

Procedural Posture: Inventors appealed decision rejecting a reissue application. CAFC affirmed.

  • Reissue: Appellants’ reissue application sought to remove the terminal disclaimer recorded during the original prosecution and substitute a new one. The Federal Circuit held that a terminal disclaimer that allegedly incorrectly included a common ownership provision was not an “error” within the meaning of 35 U.S.C. § 251. The court reasoned that the Applicants, in exchange for the benefit of overcoming an obviousness-type double-patenting rejection, deliberately surrendered the right to enforce their patent claims independent of the patent underlying the rejection.

Nathaniel DeLucia