Appeal 2005-0801
Application 09/848,628
In re Clement
The Federal Circuit’s opinion in Clement discusses a three-step test
for analyzing recapture.
Step 1 involves a determination of whether and in what aspect any
claims sought to be reissued are broader than the patent claims. The Federal
Circuit reasoned that a reissue application claim deleting a limitation or
element from a patent claim is broader as to that limitation’s or element’s
aspect. 131 F.3d at 1468, 45 U.S.P.Q.2d at 1164.
Step 2 involves a determination of whether the broader aspects of the
reissue application claims relate to surrendered subject matter. 131 F.3d at
1468-69, 45 U.S.P.Q.2d at 1164. In this respect, review of arguments and/or
amendments during the prosecution history of the application, which
matured into the patent sought to be reissued, is appropriate. In reviewing
the prosecution history, the Federal Circuit observed that “[d]eliberately
canceling or amending a claim in an effort to overcome a [prior art]
reference strongly suggests that the applicant admits that the scope of the
claim before cancellation or amendment is unpatentable. 131 F.3d at 1469,
45 U.S.P.Q.2d at 1164.
Step 3 is applied when the broadening relates to surrendered subject
matter and involves a determination whether the surrendered subject matter
has crept into the reissue application claim. Id. The following principles
were articulated by the Federal Circuit, 131 F.3d at 1470, 45 U.S.P.Q.2d at
1165:
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