Appeal No. 99-0184 Page 8
Application No. 08/567,510
therefore, prevents a patentee from regaining through reissue
the subject matter that he surrendered in an effort to obtain
allowance of the original claims. See Mentor Corp. v.
Coloplast, Inc., 998 F.2d 992, 995, 27 USPQ2d 1521, 1524 (Fed.
Cir. 1993). Under this rule, claims that are "broader than
the original patent claims in a manner directly pertinent to
the subject matter surrendered during prosecution" are
impermissible. Id. at 996, 27 USPQ2d at 1525. In addition,
to determine whether an applicant surrendered particular
subject matter, we look to the prosecution history for
arguments and changes to the claims made in an effort to
overcome a prior art rejection. See Mentor, 998 F.2d at
995-96, 27 USPQ2d at 1524-25; Ball Corp. v. United States, 729
F.2d 1429, 1436, 221 USPQ 289, 294-95 (Fed. Cir. 1984).
The "recapture doctrine" clearly does not apply to the
facts of this case. In that regard, we note that the
appellant never amended the claims in an effort to overcome a
prior art rejection. Thus, the appellant never surrendered
any particular subject matter that would be subject to the
"recapture doctrine." Furthermore, while original patent
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