Reissue Is Not Remedy to Terminal Disclaimer

Affirming a decision by the U.S. Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board) rejecting a reissue application as improper since it was terminally disclaimed to an expired patent, the U.S. Court of Appeals for the Federal Circuit agreed that reissue proceedings cannot be used to withdraw a terminal disclaimer from an issued patent.  In re Shunpei Yamazaki, Case No. 12-1086 (Fed. Cir., Dec. 6, 2012) (Lourie, J).

During the course of prosecuting its application, Yamazaki filed a terminal disclaimer to overcome an obviousness-type double patenting rejection based on Yamazaki's earlier-issued U.S. patent.  The terminal disclaimer disclaimed the statutory term of any patent granted on the application that would extend beyond the expiration date of the issued patent.  Yamazaki later amended the independent claims of the pending application, such that, in Yamazaki's view, the pending claims became patentably distinct over the claims of