Appeal No. 2004-0659
Application No. 09/111,978
According to the principles set forth by the Federal Circuit, if the reissue claims
are as broad in all aspects as the claims prior to the amendment, then the recapture rule
bars the claims. As stated supra, the addition of a limitation to overcome a prior art
rejection suggests an admission that the scope of the claim prior to the amendment is
unpatentable. Therefore, if all limitations of the reissue claim are at least as broad as the
claim prior to the amendment, then the recapture rule bars the claim. Additionally, if the
reissue claim is at least as broad in an aspect related to a prior art rejection (i.e., the
limitation added to overcome the reference), even if narrower in an aspect unrelated to
the prior art rejection, then the recapture rule bars the claims. In other words, completely
eliminating a limitation added to overcome a prior art rejection, even if accompanied by a
narrowing in another area, is barred by the recapture rule.
However, if the reissue claims are narrower in all aspects (including the limitation
added to overcome the reference) or in an aspect related to a prior art rejection (i.e., with
regard to the limitation added to overcome the reference), even if broader in other areas,
then the recapture rule does not apply. Thus, a narrowing of the claim in the area of the
limitation that overcame the prior art rejection, regardless of the scope of the remaining
limitations, avoids a bar by the recapture rule. To summarize, a limitation added to
overcome a prior art rejection cannot be eliminated completely in a reissue claim unless it
is offset by a corresponding narrowing in the same area.
In Hester Industries Inc. v. Stein Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed.
Cir.), cert. denied, 525 U.S. 947 (1998), the patentee eliminated completely, in a reissue
application, two limitations of the original claims that were argued as distinguishing the
claims over the prior art. The Federal Circuit analyzed the prosecution history of the
original patent and determined that Williams, the inventor of Hester's patent, had argued
that "each of these limitations was 'critical' with regard to patentability," that those
arguments "constitute[d] an admission by Williams that these limitations were necessary
to overcome the prior art," and that "Williams, through his admission . . . surrendered
claim scope that does not include these limitations." Id. at 1482, 46 USPQ2d at 1649.
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