Appeal No. 2004-0659
Application No. 09/111,978
Step 3 is applied when the broadening relates to surrendered subject matter and
involves a determination whether the surrendered subject matter has crept into the reissue
application claim. Id. The following principles were articulated by the Federal Circuit,
131 F.3d at 1470, 45 USPQ2d at 1165:
Substep (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;
Substep (2): if it is narrower in all aspects, the recapture rules
does not apply, but other rejections are possible;
Substep (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.
(4)
NORTH AMERICAN CONTAINER
In North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335,
75 USPQ2d 1545 (Fed. Cir. 2005), the Federal Circuit had occasion to further address
Substep (3)(a) of Clement.
North American Container involved a reissue patent, which had been held invalid
by the U.S. District Court for the Northern District of Texas. The district court bottomed
its invalidity holding based on a violation of the recapture rule. During prosecution of an
application for patent, an examiner rejected the claims over a combination of two prior
art references: Dechenne and Jakobsen. To overcome the rejection, North American
Container limited its application claims by specifying that a shape of “inner walls” of a
base of a container was “generally convex.” North American Container convinced the
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