Appeal No. 2005-0841
Application No. 08/230,083
58. With respect to reissue application claim 16, the
examiner states (page 4):
Reissue claim 16 omits the ... limitation of originally
filed claim 2 (element E), and therefore, impermissibly
recaptures what was previously surrendered.
* * *
Reissue claim 16 omits the ... limitation of originally
filed claim 12 (element Z), and therefore, impermissibly
recaptures what was previously surrendered.
59. The record supports the examiner's findings with
respect to what limitations do not appear in reissue application
claims 14 and 16 which were present in claims 2 and 12 of the
original application, as filed.
C. Discussion
1. Recapture principles
(1)
Recapture is not an error
within the meaning of 35 U.S.C. § 251
What has become known as the "recapture rule," prevents a
patentee from regaining through a reissue patent subject matter
that the patentee surrendered in an effort to obtain allowance
of claims in the patent sought to be reissued. In re Clement,
131 F.3d 1464, 1468, 45 USPQ2d 1161, 1164 (Fed. Cir. 1997).
If a patentee attempts to "recapture" what the patentee
previously surrendered in order to obtain allowance of original
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