Appeal No. 2004-0659
Application No. 09/111,978
The Federal Circuit was faced once again with the issue of reissue recapture in
North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d
1545 (Fed. Cir. 2005). During the prosecution of an application for patent, the examiner
rejected the claims over a combination of two references, Dechenne and Jakobsen. To
overcome the rejection, the applicant limited the claims by specifying that the shape of
the inner walls was generally convex. The applicant convinced the examiner that the
shape of the base as amended defined over "both the Dechenne patent, wherein the
corresponding wall portions 3 are slightly concave . . . and the Jakobsen patent, wherein
the entire re-entrant portion is clearly concave in its entirety." Id. at 1340, 75 USPQ2d at
1549. After a patent issued on the amended claims, the applicant filed a reissue
application including claims in which the language "inner wall portions are
generally convex" was eliminated, but the language "wherein the diameter of said re-
entrant portion is in the range of 5% to 30% of the overall diameter of said side wall" was
added to some of the claims.
The Federal Circuit applied the three step test of Clement. The Federal Circuit
found that the reissue claims were "broader in scope than the originally-issued claims in
that they no longer require the 'inner walls' to be 'generally convex.'" Id. at 1350, 75
USPQ2d at 1557. Further, the broadened aspect (i.e., the broadened limitation) "relate[d]
to subject matter that was surrendered during prosecution of the original-filed claims."
Id. However, the Federal Circuit found that "the reissue claims were not narrowed with
respect to the 'inner wall' limitation, thus avoiding the recapture rule." Id. The Federal
Circuit stated, "[t]hat the reissue claims, looked at as a whole, may be of 'intermediate
scope' is irrelevant. . . . [T]he recapture rule is applied on a limitation-by-limitation basis,
and the applicant's deletion of the 'generally convex' limitation clearly broadened the
'inner wall' limitation." Id.
It is important to note that the Federal Circuit determined that the re-entrant
portion (the element further narrowed in the reissue claims) was part of the inner wall.
Thus, the limitation added in the reissue claims (regarding the re-entrant portion) did in
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