Reissue Unavailable Where Applicants Failed to Identify an "Error" That Led Them to File a Terminal Disclaimer They Later Sought to Alter

In re Dinsmore, 757 F.3d 1343 (Fed. Cir. July 11, 2014) (TARANTO, Bryson, Hughes) (PTAB) (2 of 5 stars)

Federal Circuit affirms rejection of reissue application because it wasn't directed to an "error" correctable under section 251. During the original prosecution, the applicants overcame an obviousness-type double-patenting rejection by submitting a terminal disclaimer that the patent would be enforceable (i) only during the period in which it and the prior patent were commonly owned and (ii) only during the term of the prior patent. They later sought to modify it in reissue to eliminate the first condition because the patents were not commonly owned.

That was impermissible. There was no "error" in the disclaimer—it was readily enforceable, achieved its desired effect (overcoming the rejection), was not missing any required certification, and did not include any forbidden language. It did not erroneously state the patents were commonly owned, just that they could be enforced only if commonly owned. Moreover, the applicants identified no misunderstanding about the law or facts (e.g., no mistaken belief that the patents were commonly owned) that led them to erroneously file the disclaimer. "On the record of this case, applicants are ultimately seeking simply to revise a choice they made, not to remedy the result of a mistaken belief. Theirs is not an error remediable under the reissue statute." Slip op. at 11.