Appeal 2005-0801
Application 09/848,628
claimed waste cart can have any type of lid, or no lid at all). The subject
matter of a lid was before Appellants and the Examiner at the time the
rejection(s) were made, and therefore is germane to the art rejection(s).
Reissue claim 8 is narrower than original patent application claims 1,
2, and 4 in reciting a perforated false bottom that is pivotable and that has a
support member extending downwardly from the perforated false bottom.
The issue of whether this claimed aspect is germane to the art rejection can
be viewed in one of two ways, as follows.
On the one hand, it can be said that the claimed aspect of a perforated
false bottom is germane to the art rejection(s) in view of the prosecution
history11. This subject matter was not overlooked12 by Appellants (it was
11 The subject matter of a perforated false bottom existed in original patent
application claims 5, 7, 9, 15, 18, and 19. Claims 9 and 19, for example,
each recited that the perforated false bottom is hingedly connected to the
hollow body.
12 As explained in Hester, 142 F.3d 1472, 1482-83, 46 U.S.P.Q.2d 1641,
1649-50 (Fed. Cir. 1998), 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.” North Am. Container, Inc. v. Plastipak
Packaging, Inc., 415 F.3d 1335, 1349, 75 U.S.P.Q.2d 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 v. Storz Instr., Inc., 258 F.3d
1366, 1371, 59 U.S.P.Q.2d 1597, 1600 (Fed. Cir. 2001) ("[f]inally, the court
must determine whether the reissued claims were materially narrowed in
other respects to avoid the recapture rule").
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