Appeal No. 1999-0323 Page 9
Application No. 08/079,504
claim is one way to do this. If the scope of the reissue3
claim is as broad as or broader than the canceled or amended
claim in all aspects, then the recapture doctrine bars the
claim. In contrast, a reissue claim narrower in scope in all
aspects escapes the recapture doctrine entirely. However, if
the reissue claim is broader in some aspects, but narrower in
others, then: (a) if the reissue claim is as broad as or
broader in an aspect germane to a prior art rejection, but
narrower in another aspect completely unrelated to the
rejection, the recapture doctrine bars the claim; (b) if the
reissue claim is narrower in an aspect germane to prior art
rejection, and broader in an aspect unrelated to the
rejection, the recapture doctrine does not bar the claim. 4
The examiner has not determined that surrendered subject
matter has crept into the rejected reissue claims.
3 In re Wadlinger, 496 F.2d 1200, 1204, 181 USPQ 826, 830
(CCPA 1974).
4 Mentor is an example of (a); Ball is an example of (b).
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