Appeal No. 2004-0659
Application No. 09/111,978
impermissible broadening," Id. at 996, 27 USPQ2d at 1526, or, rather, in relation to the
omission of the limitation added for patentability.
In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997), relying heavily
on the analysis in Ball and Mentor, developed a three step test for determining whether
the claims of a reissue application recapture surrendered subject matter. The first step is
"to determine whether and in what 'aspect' the reissue claims are broader than the patent
claims." Clement at 1468, 45 USPQ2d at 1164. The Federal Circuit looked at the
individual limitations that have been broadened, stating that "a reissue claim that deletes
a limitation or element from the patent claims is broader in that limitation's aspect." Id.
The second step of the test is "to determine whether the broader aspects of the reissue
claims relate to surrendered subject matter." Id. at 1468-69, 45 USPQ2d at 1164. The
Federal Circuit looked to the prosecution history, focusing on arguments and
amendments made to overcome prior art rejections, stating that "[d]eliberately canceling
or amending a claim in an effort to overcome a reference strongly suggests that the
applicant admits that the scope of the claim before cancellation or amendment is
unpatentable." Id. at 1469, 45 USPQ2d at 1164. Thus, the scope of the claim prior to
cancellation or amendment is generally considered to be surrendered subject matter. In
fact, in setting up the third step, the Federal Circuit refers to the applicant as having
"surrendered the subject matter of the canceled or amended claim,8 . . . ." Id. However,
later in the decision, in analyzing the facts of the case, the Federal Circuit determined that
eliminating limitations that had been added to overcome prior art rejections rendered the
reissue claims broader "in a manner directly pertinent to the subject matter that Clement
surrendered throughout the prosecution." Id. at 1471, 45 USPQ2d at 1166. In other
8 We note that the term "amended" generally refers to a claim after an
amendment has been entered. Thus, "canceled or amended" could refer to the claim prior
to or subsequent to amendment. As the amended claim would equate to the patented
claim, thereby rendering the patented claim surrendered, the normal reading of the term
"amended" would seem to be inappropriate. Thus, we will focus on the "canceled claim,"
recognizing that the phrase "canceled or amended" includes something more.
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