Appeal No. 1998-2911
Application 08/314,345
claims. In re Clement, 131 F.3d 1464, 1468-69, 45 USPQ2d
1161, 1164 (Fed. Cir. 1997). The first step in applying the
recapture rule is to determine whether and in what aspect the
reissue claims are broader than the patent claims; the second
step is to determine whether the broader aspects of the
reissue claims relate to surrendered subject matter by looking
to the prosecution history for arguments and changes to the
claims made in an effort to overcome a prior art rejection.
Id.
The application of the first step to the present fact
situation is fairly simple and straightforward and is not the
subject of dispute. Reissue claims 35 and 36 are broader than
corresponding patent claims 1 and 2 in that they do not
include the “in parallel planes” language.
The controversy in this appeal involves the application
of the second step, i.e., whether the “in parallel planes”
language absent from claims 35 and 36 relates to subject
matter surrendered in an effort to overcome the prior art and
obtain allowance of patent claims 1 and 2. Based on our
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