Appeal 2005-0801
Application 09/848,628
(3) If the reissue claim is broader in some aspects, but narrower in
others, then: (a) if the reissue claim is as broad as or broader in an aspect
germane to a prior art rejection, but narrower in another aspect completely
unrelated to the rejection, the recapture rule bars the claim; (b) if the reissue
claim is narrower in an aspect germane to prior art rejection, and broader in
an aspect unrelated to the rejection, the recapture rule does not bar the claim,
but other rejections are possible.
APPLICATION OF THE RECAPTURE RULE TO REISSIUE CLAIM 88
As noted in Clement, the first step in applying the recapture rule is to
determine whether and in what "aspect" the reissue claim is broader than the
patent claims. This step of the analysis is important to ensure that the
applicant has not run afoul of the two-year limitation on broadening, and, if
broadening has occurred, to establish exactly in what aspects such
broadening has occurred.
Reissue claim 8 is broader than patent claim 19 because reissue claim
8 does not recite a lid and any details of such a lid. Having determined that
reissue claim 8 is broader, we now proceed to the second step of the Clement
test.
8 Our determinations made with respect to reissue claim 8 are applicable to
reissue claim 11, as each of these claims recites similar subject matter.
9 We select patent claim 1 because it is the broadest patent claim.
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