Appeal No. 2004-0659
Application No. 09/111,978
words, the Federal Circuit appears to include as "surrendered subject matter" more than
merely the canceled claims; the phrase also encompasses something pertaining to the
limitation added in the original prosecution to overcome a prior art rejection.
If the broadening is found to relate to surrendered subject matter, the third and
final step of the test is to "determine whether the surrendered subject matter has crept into
the reissue claim." Id. at 1469, 45 USPQ2d at 1164. In other words, viewing surrendered
subject matter as including more than merely the finally rejected claim, the third step is to
determine whether the claims have been narrowed in the same aspects, or with respect to
the same limitations, that prompted a finding of surrendered subject matter.
By analyzing the reasoning in Mentor and Ball, the Federal Circuit arrived at the
following principles as an approach to the third step:
(1) if the reissue claim is as broad as or broader than the
canceled or amended claim in all aspects, the recapture rule
bars the claim; (2) if it is narrower in all aspects, the
recapture rule does not apply, but other rejections are
possible; (3) 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 rule bars the claim;
(b) 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, but
other rejections are possible.
Clement at 1470, 45 USPQ2d at 1165. The third step of the test in Clement compares the
reissue claims to the canceled claims, i.e., the claims of the patented application (upon
which the reissue is based) prior to the amendment that resulted in the patent. We note
that the test uses the phrase "canceled or amended," which as indicated supra, we assume
includes something more than the canceled claim. Again we will focus on the "canceled"
claim only, as the alternative language appears to be cumulative in our interpretation of
the test.
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