Appeal No. 99-0629 Page 16
Application No. 08/778,059
"deliberate withdrawal or amendment . . . cannot be said to
involve the inadvertence or mistake contemplated by 35 U.S.C.
Section 251." Haliczer v. United States, 356 F.2d 541, 545,
148 USPQ 565, 569 (Ct. Cl. 1966). The recapture rule,
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 other
words, if the reissue claim is as broad as or broader than the
canceled or amended claim in an aspect germane to a prior art
rejection, but narrower in another aspect completely unrelated
to the rejection, the recapture rule bars the claim; if the
reissue claim is narrower in an aspect germane to a prior art
rejection, and broader in an aspect unrelated to the
rejection, the recapture rule does not bar the claim. In re
Clement, 131 F.3d 1464, 1470, 45 USPQ2d 1161, 1165 (Fed. Cir.
1997). In addition, to determine whether an applicant
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