In re: Dinsmore, No. 13-1637 (Fed. Cir. 2014)
Annotate this CaseThe inventors named in the application for the 568 patent, entitled “Miniature x-ray source with improved output stability and voltage standoff,” recorded a terminal disclaimer in response to rejections for obviousness-type double patenting. The disclaimer declares that the 568 patent “shall be enforceable only for and during such period” as it is commonly owned with the patent that underlay the double-patenting rejections, referring to a 2003 patent that named one of the inventors as sole inventor. The patent issued in 2007. In their reissue application (35 U.S.C. 251) the inventors sought to modify the recorded terminal disclaimer to delete the common-ownership provision, and to modify the claims that gave rise to the disclaimer, because the two patents are not and never were commonly owned. A PTO examiner rejected the reissue application; the Patent Trial and Appeal Board and Federal Circuit affirmed. The applicants, knowing that the patents were not commonly owned, intentionally surrendered a possible right (the ability to obtain all or some of the 568 patent claims in a form enforceable independently of the other patent) in exchange for a benefit, overcoming an obviousness-type double-patenting rejection of several of the proposed claims. They are simply seeking to revise that choice, not to remedy the result of a mistaken belief. Theirs is not an error remediable under the reissue statute.
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