Appeal 2005-0801
Application 09/848,628
596, 43 U.S.P.Q. 460 (C.C.P.A. 1939). Hence, our concurring colleagues
err in taking the position that surrendered subject matter must be defined
under all circumstances as including any claim which lacks a limitation
added or argued by an applicant in order to avoid a rejection.
The three-step test for analyzing recapture as set forth in Clement is as
follows.
The first step in applying the recapture rule 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. Thus, one looks to the
prosecution history for arguments and changes to the claims made in an
effort to overcome a prior art rejection to determine what surrendered
subject matter exists, if any. If no surrendered subject matter exists, then the
"recapture rule" does not apply.
If surrendered subject matter exists, it must then be determined
whether the surrendered subject matter has crept into the reissue claims
(third step). The following categories apply when conducting the third step
(when comparing the reissue claim with the surrendered subject matter).
(1) If the scope of the reissue claim is as broad as or broader than the
surrendered subject matter in all aspects, then the recapture rule bars the
claim.
(2) If the reissue claim is narrower in scope than the surrendered
subject matter in all aspects, it escapes the recapture rule entirely.
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