Appeal No. 2004-0659
Application No. 09/111,978
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 reentrant portion is clearly concave in its entirety.” 415 F.3d at
1340, 75 USPQ2d at 1549. After a patent issued containing the amended claims, North
American Container filed a reissue application seeking reissue claims in which (1) the
language “inner wall portions are generally convex” was eliminated, but (2) 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. Thus, the claim sought be reissued was
broader in some aspects and narrower in other aspects.
The Federal Circuit, applying the Clement three-step test, held 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.” The Federal Circuit further found that
the broadened aspect (i.e., the broadened limitation) “relate[d] to subject matter that was
surrendered during prosecution of the original-filed claims.” 415 F.3d at 1350, 75
USPQ2d at 1557. The Federal Circuit observed “the reissue claims were not narrowed
with respect to the ‘inner wall’ limitation, thus avoiding the recapture rule.” 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 ... [North American Container’s] deletion of the
“generally convex” limitation clearly broadened the “inner wall”
limitation.
Id. Thus, the Federal Circuit in North American Container further developed the
principles of Substep (3)(a) of Clement: “broader in an aspect germane to a prior art
rejection” means broader with respect to a specific limitation (1) added to overcome prior
art in prosecution of the application which matured into the patent sought to be reissued
and (2) eliminated in the reissue application claims.
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