Appeal 2005-0801
Application 09/848,628
Judge McQuade, additional views.
The Clement step 3(a) analysis set forth in the majority opinion is not
the only legitimate approach for evaluating recapture issues.
In general, the reissue recapture rule prevents a patentee from
regaining through reissue subject matter that was surrendered in an effort to
obtain allowance of the original claims. North American Container, Inc. v.
Plastipak Packaging, Inc., 415 F.3d 1335, 1349, 75 U.S.P.Q.2d 1545, 1556
(Fed. Cir. 2005); Pannu v. Storz Instruments, Inc., 258 F.3d 1366, 1370-71,
59 U.S.P.Q.2d 1597, 1600 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein,
Inc., 142 F.3d 1472, 1480, 46 U.S.P.Q.2d 1641, 1647 (Fed. Cir. 1998); In re
Clement, 131 F.3d 1464, 1468, 45 U.S.P.Q.2d 1161, 1164 (Fed. Cir. 1997);
Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 995, 27 U.S.P.Q.2d 1521,
1524 (Fed. Cir. 1993). The Court of Appeals for the Federal Circuit recently
has employed a three-step process for applying the reissue recapture rule: the
first step 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;
and the third step is to determine whether the reissue claims are materially
narrowed in other respects so as to avoid the recapture rule. North American
Container, 415 F.3d at 1349, 75 U.S.P.Q.2d at 1556; Pannu, 258 F.3d at
1371, 59 USPQ2d at 1600; Hester, 142 F.3d at 1480-83, 46 U.S.P.Q.2d at
1648-50. The purpose of the third step is to allow a patentee to obtain
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