Appeal No. 2005-0841
Application No. 08/230,083
subject matter. 131 F.3d at 1468-69, 45 USPQ2d 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 USPQ2d 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 USPQ2d at 1165:
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;
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