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23 F.2d 776

Docket No. 1961.

In re White

District of Columbia Circuit Court of Appeals

Submitted November 16, 1927.

Decided December 5, 1927.

District of Columbia Circuit Court of Appeals · decided 1927-12-05

Cited by 4 later decisions — most recently February 1956

2 counsel of record

Key passage — most relied on by later courts

““ ‘The deliberate withdrawal of a claim in order to secure a patent is conclusive of the presumption that there has been no inadvertence, accident, or mistake, and the invention thus abandoned cannot be regained either by construing the claims of the patent broadly or by obtaining a reissue with broadened claims. The rule is the same whether the claims sought by reissue or otherwise are identical, substantially the same, or broader than the abandoned claims.’ ””

quoted by 3 later decisions, including In re Byers, Matter of the Application of Anna Rosalie Nelson Byers, of the Estate of Laud S. Byers, Deceased

Relies on Corbin Cabinet Lock Co. v. Eagle Lock Co. · Dobson v. Lees · In re Hoiland

Good law ✅— No negative treatment on recordhow we know

Decided 1927-12-05

View the full empirical analysis of this case →

¶1Patents <©=>141 (6) — Deliberate withdrawal of claim to secure patent is conclusive of presumption that there was no inadvertence, accident, or mistake (35 USCA § 64).

¶2Deliberate withdrawal of claim in order to secure patent is conclusive of the presumption that there has been no inadvertence, accident, or mistake, within meaning of Rev. St. § 4916 (35 USCA § 64; Comp. St. § 9461).

¶3Appeal from the Commissioner of Patents.

¶4In the matter of the application of Henry H. White for the reissue of a patent. From an adverse decision, applicant appeals.

¶5Affirmed.

¶6V. E. Hodges and J. P. Swecker, both of Washington, D. C., for appellant.

¶7T. A. Hostetler, of Washington, D. C., for appellee.

¶8Before MARTIN, Chief Justice, and EOBB and VAN OESDEL, Associate Justices. -

¶9ROBB, Associate Justice.

¶10Appeal from decisions of the Patent Office tribunals refusing reissue of a patent containing claims 3 to 7, inclusive.

¶11During the prosecution of appellant’s original application, several claims were rejected on prior patents. Thereupon appellant deliberately withdrew the broader claims of his application to avoid the references, and a patent was granted with limited claims. Nearly 2% years after this rejection on the references, appellant filed his application for reissue, alleging that his patent is “inopera/tive for the reason that the specification thereof is defective, and that such defect consists particularly in the failure to include certain claims that petitioner is entitled to.” The appealed claims are even broader than the claims that were deliberately withdrawn.

¶12It is settled law that the deliberate withdrawal of a claim in order to secure a patent is conclusive of the presumption that there has been no inadvertence, accident, or mistake, within the meaping of section 4916, R. S. (35 USCA § 64; Comp. St. § 9461). In re Denton, 12 App. D. C. 504; In re Lacroix, 30 App. D. C. 299; Ex parte Hoiland, 50 App. D. C. 268, 270 F. 704; Dobson v. Lees, 137 U. S. 258, 11 S. Ct. 71, 34 L. Ed. 652; Corbin Cabinet Lock Co. v. Eagle Lock Co., 150 U. S. 38, 14 S. Ct. 28, 37 L. Ed. 989.

¶13The decision of the Patent Office was right, and is affirmed.

¶14Affirmed.

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