How does pre-AIA 35 U.S.C. 103(c) apply to reissue applications?
The application of pre-AIA 35 U.S.C. 103(c) to reissue applications involves specific considerations, particularly regarding the doctrine of recapture. The MPEP states:
“For reissue applications, the doctrine of recapture may prevent the presentation of claims in the reissue applications that were amended or cancelled from the application which matured into the patent for which reissue is being sought, if the claims were amended or cancelled to overcome a rejection under 35 U.S.C. 103 based on prior art under pre-AIA 35 U.S.C. 102(e) which was not able to be disqualified under pre-AIA 35 U.S.C. 103(c) in the application that issued as a patent.”
This means that if claims were previously amended or cancelled to overcome a rejection that could not be disqualified under pre-AIA 35 U.S.C. 103(c) at the time, the doctrine of recapture might prevent reintroducing those claims in a reissue application, even if the prior art could now be disqualified under the amended pre-AIA 35 U.S.C. 103(c).
The MPEP advises: “If an examiner determines that this situation applies in the reissue application under examination, a consultation with the Office of Patent Legal Administration should be initiated via the Technology Center Quality Assurance Specialist.”
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