Appeal No. 2004-0659
Application No. 09/111,978
precedent, and potentially the broadening provision of 35 U.S.C. § 251, in taking the
position that such a definition is no longer proper under any circumstances. Until and
unless our reviewing court holds otherwise, this definition of surrendered subject matter
should be applied under appropriate factual circumstances.
On page 33 of this decision, the majority properly determines that “there has been
no material narrowing [of the appealed reissue claims] to avoid the recapture rule.”
However, the paragraph which contains this statement suggests that the majority believes
the recapture rule may be avoided only if a material narrowing relates to the subject
matter (i.e., a limitation of the original patent claims) which was broadened.
This belief is incorrect.
It is well established that the recapture rule may be avoided by a narrowing in
aspects unrelated to the broadening aspects. See In re Clement, 131 F.3d 1464, 1469-70,
45 USPQ2d 1161, 1165 (Fed. Cir. 1997) and Mentor Corp. v. Coloplast, Inc., 998 F.2d
992, 996, 27 USPQ2d 1521, 1525 (Fed. Cir. 1993). As explained in Hester Indus., Inc. v.
Stein, Inc., 142 F.3d 1472, 1482-83, 46 USPQ2d 1641, 1649-50 (Fed. Cir. 1998):
[T]his principal, in appropriate cases, may operate to overcome the
recapture rule when the reissue claims are materially narrower in other
overlooked aspects of the invention. The purpose of this exception to the
recapture rule is to allow the patentee to obtain through reissue a scope of
protection to which he is rightfully entitled for such overlooked aspects.
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