Appeal No. 2005-0642
Application No. 09/568,278
binding precedent in taking the position that such a definition is no longer proper
under any circumstances.
I readily acknowledge that the majority's definition of surrendered subject
matter would be proper under appropriate factual circumstances. See
Hester Indus., Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir.
1998). However, the majority has erred in contending that such a definition is
proper under all circumstances. Indeed, such an inflexible definition is not only
contrary to binding precedent of our past and present reviewing courts but also is
potentially contrary to a reissue applicant's right under 35 U.S.C. § 251 to enlarged
claim scope.
Thus, I am fundamentally in disagreement with the majority's non-
categorical definition of surrendered subject matter. Additionally, I disagree with
the majority's determination that the Examiner's § 251 rejection should be
sustained. My reasons for this latter disagreement follow.
Application of the recapture rule is a three-step process. The first step is to
determine whether and in what aspect the reissue claims are broader than the patent
claims. The second step is to determine whether the broader aspects of the reissue
claims relate to surrendered subject matter. The third step is to determine whether
the reissue claims are materially narrowed in other respects to avoid the recapture
rule. Pannu v. Storz Instruments, Inc., 258 F.3d 1366, 1371, 59 USPQ2d 1597,
1600 (Fed. Cir. 2001). Also see Hester, 142 F.3d at 1482-83, 46 USPQ2d at 1649-
50; Clement, 131 F.3d at 1468-69, 45 USPQ2d at 1165.
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