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 - 55 -Page: Previous 48 49 50 51 52 53 54 55 56 57 58 59 60 61 62 NextLast modified: November 3, 2007