Appeal No. 2005-0642
Application No. 09/568,278
(3)
In re Clement
The Federal Circuit’s opinion in Clement discusses a three-step test for
analyzing recapture.
Step 1 involves a determination of whether and in what aspect any claims
sought to be reissued are broader than the patent claims. The Federal Circuit
reasoned that a reissue application claim deleting a limitation or element from a
patent claim is broader as to that limitation’s or element’s aspect. 131 F.3d at
1468, 45 USPQ2d at 1164.
Step 2 involves a determination of whether the broader aspects of the reissue
application claims relate to surrendered subject matter. 131 F.3d at 1468-69,
45 USPQ2d at 1164. In this respect, review of arguments and/or amendments
during the prosecution history of the application, which matured into the patent
sought to be reissued, is appropriate. In reviewing the prosecution history, the
Federal Circuit observed that “[d]eliberately canceling or amending a claim in an
effort to overcome a [prior art] reference strongly suggests that the applicant
admits that the scope of the claim before cancellation or amendment is
unpatentable. 131 F.3d at 1469, 45 USPQ2d at 1164.
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