Appeal No. 2004-0659
Application No. 09/111,978
JUDGE GROSS, with whom Judge Ruggiero joins.
PERTINENT CASE LAW
In Ball Corp. v. United States, 729 F.2d 1429, 221 USPQ 289 (Fed. Cir. 1984),
the Federal Circuit stated that "[t]he recapture rule bars the patentee from acquiring,
through reissue, claims that are of the same or of broader scope than those claims that
were canceled from the original application." Id. at 1436, 221 USPQ at 295. We note
that the language used by the Federal Circuit did not limit the bar to "only" those claims
that were canceled from the original application. The Federal Circuit continued that "the
patentee is free to acquire, through reissue, claims that are narrower in scope than the
canceled claims," but recognized that "[t]he subject matter of the claims is not alone
controlling." Id. In other words, merely being narrower in scope than the canceled
claims may not be sufficient to overcome the recapture bar. In fact, in analyzing the facts
in Ball, the Federal Circuit held that the reissue claims were narrower in scope than the
canceled claims with respect to the same limitation relied upon to overcome a prior art
rejection made in the prosecution of the original application. Thus, although not
explicitly stated in Ball, there is a suggestion from the analysis therein that the narrowing
to overcome the recapture bar should relate to the same limitation relied upon to
overcome the prior art rejection.
Mentor Corp. v. Coloplast Inc., 998 F.2d 992, 27 USPQ2d 1521 (Fed. Cir. 1993),
affirmed the suggestion that surrendered subject matter equates to that which does not
include the limitation added to overcome a prior art rejection. Specifically, the Federal
Circuit stated, "Coloplast correctly argues that reissue claim 6, which does not include the
adhesive transfer limitation [which was added and argued to overcome the prior art
rejection], impermissibly recaptures what Mentor deliberately surrendered in the original
prosecution." Id. at 996, 27 USPQ2d at 1525. The Federal Circuit then determined
whether a narrowing of the claims had occurred that was "material in relation to the
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