Appeal No. 2005-0642
Application No. 09/568,278
Concerning the first step, all parties agree that the reissue claims are broader
than the patent claims. For example, reissue claim 26 is broader than patent claim
1 by failing to recite the patent claim 1 limitation "said latch further including at
least one catch beam extending through another of said slots, said catch beams
defining catch edges which engage catch surfaces defined by said another of said
slots to secure said latch in said latched positioned."
As for the second step, the afore-quoted broader aspects of the reissue claims
clearly relate to surrendered subject matter. In this latter regard, I define
surrendered subject matter as subject matter involved with the deliberate
cancellation or amendment of a claim in an effort to overcome a prior art rejection
since this deliberate action suggests that an applicant admits that the scope of the
claim prior to cancellation or amendment is unpatentable. Clement, 131 F.3d at
1468, 45 USPQ2d at 1164. Here, it is uncontested that the original application
claims were amended to include the limitation quoted above in a successful effort
to overcome a prior art rejection. It is, therefore, appropriate to consider as
surrendered the subject matter defined by the application claims prior to being
amended to include this limitation. Except for the "hook" feature discussed below,
reissue claim 26 is at least as broad as the application claims prior to amendment.
Accordingly, the broader aspects of reissue claim 26 relate to surrendered subject
matter.
The third step in applying the recapture rule involves determining whether
the reissue claims are materially narrowed in other respects so as to avoid the
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