Ex Parte Rosenberg et al - Page 55



             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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