REVERSED

1700 Chemical & Materials Engineering
Ex Parte Konrad DELMENDO 103(a) DAVIDSON, DAVIDSON & KAPPEL, LLC

2800 Semiconductors, Electrical and Optical Systems and Components
Ex Parte Riley et al NAPPI 103(a)/112(1) IBM CORPORATION

Ex Parte Sakai et al NAGUMO 103(a) NIXON & PEABODY

3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
Ex Parte LEPAGE et al HORNER 35 U.S.C. § 251 recapture HANLEY, FLIGHT & ZIMMERMAN, LLC

The Federal Circuit in Hester held that arguments made to overcome the prior art can alone evidence an admission sufficient to give rise to impermissible recapture. 142 F.3d at 1481. The court in Hester noted:

[T]he reissue statute is “based on fundamental principles of equity and fairness.” Weiler, 790 F.2d at 1579, 229 USPQ at 675. There is no unfairness in binding the patentee to deliberate assertions made in order to obtain allowance of the original patent claims over the prior art. Indeed, fairness to the public must also be considered. In this regard, as stated in Mentor, “the reissue statute cannot be construed in such a way that competitors, properly relying on prosecution history, become patent infringers when they do so.” 998 F.2d at 996, 27 USPQ2d at 1525. The recapture rule operates to prevent this from happening. See id. Furthermore, as recognized in Ball, the recapture rule is based on principles of equity and therefore embodies the notion of estoppel. 729 F.2d at 1439, 221 USPQ at 296.

Id. at 1481. The court in Hester analogized argument-based surrender in the reissue context to the rule of argument-based surrender in the prosecution history estoppel context. Id. (citing to Warner-Jenkinson v. Hilton Davis Chem. Co., 520 U.S. 17 (1997)). For such argument-based estoppel, the question is whether a “reasonable competitor” would have known that the subject matter was being relinquished. Hoganas AB v. Dresser, 9 F.3d 948 (Fed. Cir. 1993).

3700 Mechanical Engineering, Manufacturing, and Products & Designs
Ex Parte Setter et al HORNER 102(b)/103(a) BLANK ROME LLP

AFFIRMED-IN-PART

1700 Chemical & Materials Engineering
Ex Parte Sandstrom et al McKELVY 103(a) WOOD, HERRON & EVANS, LLP

2100 Computer Architecture and Software
Ex Parte Nair et al MACDONALD 103(a)/112(2) 37 C.F.R. § 41.50(b) INTERNATIONAL BUSINESS MACHINES CORPORATION Richard Lau

2600 Communications
Ex Parte Dorenbosch et al NAPPI 102(e)/103(a) MOTOROLA, INC

3700 Mechanical Engineering, Manufacturing, and Products & Designs
Ex Parte Viola et al BAHR 102(b)/103(a) Tyco Healthcare Group LP