Appeal 2005-0801
Application 09/848,628
of these claims in favor of but a single patent claim (claim 4) reciting the
perforated false bottom, with the recitation of this element being relatively
broad.
Thus, the prosecution history of the patent establishes that the
Appellants originally presented a number of claims reciting the perforated
false bottom with varying degrees of specificity and subsequently canceled
all of these claims to arrive at patent claims in which the perforated false
bottom was either not recited or, in the case of patent claim 4, only broadly
recited. These actions by the Appellants do not support, and in fact belie,
any contention that the perforated false bottom limitations recited in reissue
claim 8 pertain to an overlooked aspect of the invention that materially
narrows the claim to the extent necessary to outweigh the broadened,
surrender-related aspects of the claim.
Hence, claim 8, and claims 9-13 which stand or fall therewith, run
afoul of the recapture rule because they would allow the appellants to regain
through reissue subject matter that was surrendered to obtain the patent.
The foregoing illustrates that the law permits some flexibility as to the
manner in which recapture issues can be evaluated. There is no basis in law,
however, for the procedure advanced in the concurring opinion
notwithstanding its understandable aim “to place practical and workable
burdens on examiners and Applicants” (page 62) dealing with the admittedly
complex and difficult questions posed by reissue claims falling within
category 3, and potentially category 3(a), of Clement.
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