Appeal 2005-0801
Application 09/848,628
As stated in Clement, “(3) if the reissue claim is broader [than a
canceled or amended claim] 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” (131 F.3d at 1468, 45
U.S.P.Q.2d at 1165). Thus, the observation in the concurring opinion that an
examiner “can make out a prima facie case of recapture by establishing that
the claims sought to be reissued fall within [Substep] 3(a) of Clement” (page
57) goes without saying.
The concurring opinion goes on to propose an allocation of proof that
forms the basis for the proposition that
the “surrendered subject matter” that may not be recaptured
through reissue should be presumed to include subject matter
broader than the patent claims in a manner directly related to
(1) limitations added to the claims by amendment (either by
amending an existing claim or canceling a claim and replacing
it with a new claim with that limitation) to overcome a
patentability rejection and (2) limitations argued to overcome a
patentability rejection without amendment of a claim [page 62].
Applying this novel evidentiary concept to the present case, the
concurring opinion concludes that
Because limitations A [pertaining to the reinforcing groove]
and B [pertaining to the at least one L shaped retainer member]
are absent from the reissue claims being rejected and since
those limitations are germane as to why the prior art did not
reach claims containing limitations A and B, the Examiner has
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