Appeal 2007-0493
Application 10/289,967
Patent 6,144,380
walls” of a base of a container was “generally convex.” North American
Container convinced the examiner that the shape of the base, as amended,
defined over “both the Dechenne patent, wherein the corresponding wall
portions 3 are slightly concave ... and the Jakobsen patent, wherein the entire
reentrant portion is clearly concave in its entirety.” 415 F.3d at 1340, 75
USPQ2d at 1549. After a patent issued containing the amended claims,
North American Container filed a reissue application seeking reissue claims
in which (1) the language “inner wall portions are generally convex” was
eliminated, but (2) the language “wherein the diameter of said re-entrant
portion is in the range of 5% to 30% of the overall diameter of said side
wall” was added. Thus, the claim sought be reissued was broader in some
aspects and narrower in other aspects.
The Federal Circuit, applying the Clement three-step test, held that the
reissue claims were broader in scope than the originally-issued claims in that
they no longer require the “inner walls” to be “generally convex.” The
Federal Circuit further found that the broadened aspect (i.e., the broadened
limitation) “relate[d] to subject matter that was surrendered during
prosecution of the original-filed claims.” 415 F.3d at 1350, 75 USPQ2d at
1557. The Federal Circuit observed “the reissue claims were not narrowed
with respect to the ‘inner wall’ limitation, thus avoiding the recapture rule.”
The Federal Circuit stated:
[t]hat the reissue claims, looked at as a whole, may be of
“intermediate scope” is irrelevant. . . . [T]he recapture rule is
applied on a limitation-by-limitation basis, and ... [North
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