Appeal No. 1999-0323 Page 7
Application No. 08/079,504
essentially meaningless; these claims do not definitely
limit "small"; it is not clear what size detector would
not be "small". Nor do they set forth any meaningful
limitation of what "keep the capacitance down" of "the
speed is up" could mean. It is unclear what, if any,
capacitance would not be "down" nor what speed would not
be "up". The instant specification mentions, on page 2,
lines 21-25, a detector which has a detector area of 20
mm X 20 mm, with a capacitance of several hundred
picofarads. It would appear that by any reasonable
definition of the terms 20 mm X 20 mm could be "small"
and a capacitance of several hundred picofarads would be
"down". Thus, though the portion of the claim may have
more words than merely "small", it does not in fact
further limited [sic]. Thus the rejection has not been
overcome.
The Federal Circuit in In re Clement, 131 F.3d 1464,
1468-70, 45 USPQ2d 1161, 1164-65 (Fed. Cir. 1997) set forth a
three step process for determining if the recapture doctrine
should be applied against claims in a reissue application.
The first step in applying the recapture doctrine is to
determine whether and in what "aspect" the reissue claims are
broader than the patent claims. For example, a reissue claim
that deletes a limitation or element from the patent claims is
broader in that limitation's aspect. The examiner has not
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