Appeal No. 2005-0841
Application No. 08/230,083
(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.
(3)
North American Container
In North American Container, Inc. v. Plastipak Packaging,
Inc., 415 F.3d 1335, 75 USPQ2d 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
Container limited its application claims by specifying that a
shape of "inner walls" of a base of a container was "generally
convex." North American Container convinced the examiner that
the shape of the base, as amended, defined over "both the
Dechenne patent, wherein the corresponding wall portions 3 are
slightly concave ... and the Jakobsen patent, wherein the entire
reentrant portion is clearly concave in its entirety." 415 F.3d
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