Appeal 2005-0801
Application 09/848,628
Substep (1): if the reissue claim is as broad as or broader
than the canceled or amended claim in all aspects, the recapture
rule bars the claim;
Substep (2): if it is narrower in all aspects, the recapture
rules does not apply, but other rejections are possible;
Substep (3): if the reissue claim is broader 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;
(b) if the reissue claim is narrower in an aspect
germane to [a] prior art rejection, and broader in an
aspect unrelated to the rejection, the recapture rule does
not bar the claim, but other rejections are possible.
(4)
North American Container
In North American Container, Inc. v. Plastipak Packaging, Inc.,
415 F.3d 1335, 75 U.S.P.Q.2d 1545 (Fed. Cir. 2005), the Federal Circuit had
occasion to further address Substep (3)(a) of Clement.
North American Container involved a reissue patent, which had been
held invalid by the U.S. District Court for the Northern District of Texas.
The district court bottomed its invalidity holding based on a violation of the
recapture rule. During prosecution of an application for patent, an examiner
rejected the claims over a combination of two prior art references:
Dechenne and Jakobsen. To overcome the rejection, North American
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