Appeal No. 2004-0659
Application No. 09/111,978
The Federal Circuit stated, "We share the district court's discomfort with Williams'
attempt to remove, through reissue, the 'solely with steam' and 'two sources of steam'
limitations after having relied so heavily on those limitations to obtain allowance of the
original patent claims over the prior art," referencing the recapture rule discussed in
Clement at 1468, 45 USPQ2d at 1164. Hester at 1480, 46 USPQ2d at 1647.
After determining that the reissue claims in Hester did include surrendered
subject matter, the Federal Circuit recognized that "the recapture rule may be avoided in
some circumstances." Id. at 1482, 46 USPQ2d at 1649. Therefore, the Federal Circuit
continued its analysis by determining "whether the reissue claims were materially
narrowed in other respects. See, e.g., Mentor, 998 F.2d at 996, 27 USPQ2d at 1525
('Reissue claims that are broader in certain respects and narrower in others9 may avoid the
effect of the recapture rule.'); Clement, 131 F.3d at 1470, 45 USPQ2d at 1165." Hester at
1482, 46 USPQ2d at 1649. The Federal Circuit found that the alleged narrowing aspects
were not overlooked during the prosecution of the original patent and, therefore, that the
case was not one "which involve[d] the addition of material limitations that overcome the
recapture rule." Id. at 1483, 46 USPQ2d at 1650.
Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir.
2001) revisited reissue recapture. In an application for patent, Pannu argued a distinction
of "a continuous substantially circular arc having a diameter greater than the diameter of
the lens body . . . which significantly enhance the easy insertibility of applicant's lens and
significantly reduce any possibility of snagging delicate eye tissue" over the prior art. In
the ensuing reissue application, Pannu eliminated that limitation from the claims, but
9 Although the Federal Circuit referred to other respects in this quote from
Mentor, later in its opinion the Federal Circuit indicated that the other respects must
relate to the limitation that was broadened. Mentor at 996, 27 USPQ2d at 1525. Further,
the Federal Circuit in Clement indicated in step three of the test that they too interpreted
other respects as relating to the limitation that was broadened. See step 3(a) of the
Clement test. Clement at 1470, 45 USPQ2d at 1166.
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