Inre: Dinsmore, 757 F.3d 1343

Applicants Dinsmore and Caruso sought reissue of the ’568 patent under 35 U.S.C. § 251 after prosecution included an obviousness-type double patenting rejection.
They recorded a terminal disclaimer tying the patent term to common ownership with the ’086 patent, though the two patents were not and never had been commonly owned.
The Patent Office examiner rejected the reissue; the PTAB affirmed; the Board ultimately denied the reissue as not supported by an ‘error’ under § 251.
Applicants initially claimed error based on an allegedly invalid terminal disclaimer and sought to remove it without modifying claims.
Over time, they proposed modified disclaimers and narrower claims in an attempt to overcome the rejection without a terminal disclaimer.
The Federal Circuit affirmed the Board, holding that the claimed error under § 251 was not shown because the initial disclaimer was valid and the later choices did not reflect a corrective error.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether an error under § 251 is shown to permit reissue	Dinsmore argues the disclaimer was ineffective, making an error.	Board contends no error existed to justify reissue.	No error shown; § 251 not satisfied.
Whether the terminal disclaimer, though valid, can be remediable as error	Dinsmore contends the disclaimer’s invalidity constitutes error to be remedied.	Board/agency rejects that the disclaimer’s effect constitutes error under § 251.	Disclaimer valid; not an error remedying.
Scope of error focusing on applicant understanding and choices	Dinsmore asserts defective understanding behind the original disclaimer and claim choices.	Board finds no deficient understanding that caused the original patenting decision.	No cognizable error based on misunderstanding; reissue denied.

In re Hubbell, 709 F.3d 1140 (Fed. Cir. 2013) (terminal disclaimer serves to prevent multiple infringement suits)
In re Amos, 953 F.2d 613 (Fed. Cir. 1991) (narrowing reissue tied to error and understanding)
In re Youman, 679 F.3d 1335 (Fed. Cir. 2012) (false or inadequate understandings underlie reissue requests)
In re Serenkin, 479 F.3d 1359 (Fed. Cir. 2007) (denies reissue where the applicant knowingly surrendered rights)
In re Mead, 581 F.2d 251 (CCPA 1978) (no error where not mistaken about intervening art; limits to genuine error)
In re Orita, 550 F.2d 1277 (CCPA 1977) (reissue requires error arising from misstep in patenting process)