Appeal No. 2005-0642
Application No. 09/568,278
therefore, that the narrowing hook feature of the reissue claims constitutes an
overlooked aspect of the Appellants' invention. Moreover, it is entirely reasonable
to consider this narrowing aspect to be material simply because, on the record
before us, it renders the reissue claims novel and unobvious over the prior art.
As explained in Hester, 142 F.3d at 1482-83, 46 USPQ2d at 1649-50,
reissue claims which recapture surrendered subject matter nevertheless may avoid
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.
Accord North Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335,
1349, 75 USPQ2d 1545, 1556 (Fed. Cir. 2005)("finally, we determine whether the
reissue claims were materially narrowed in other respects, so that the claims may
not have been enlarged, and hence avoid the recapture rule"); Pannu, 258 F.3d at
1371, 59 USPQ2d at 1600 ("[f]inally, the court must determine whether the
reissued claims were materially narrowed in other respects to avoid the recapture
rule").
Under these circumstances, the reissue claims on appeal must be considered
to avoid the recapture rule because they are "materially narrower in other
overlooked aspects of the invention" and thereby provide the Appellants with "a
scope of protection to which [they are] rightfully entitled for such overlooked
aspects." Hester, 142 F.3d at 1482-83, 46 USPQ2d at 1650. Indeed, providing a
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