Appeal No. 2005-0841
Application No. 08/230,083
at 1340, 75 USPQ2d at 1549. After a patent issued containing the
amended claims, North American Container filed a reissue
application seeking reissue claims in which (1) the language
"inner wall portions are generally convex" was eliminated, but
(2) the language "wherein the diameter of said re-entrant portion
is in the range of 5% to 30% of the overall diameter of said side
wall" was added. Thus, the claim sought be reissued was broader
in some aspects and narrower in other aspects.
The Federal Circuit, applying the Clement three-step test,
held that the reissue claims were broader in scope than the
originally-issued claims in that they no longer require the
"inner walls" to be "generally convex." The Federal Circuit
further found that the broadened aspect (i.e., the broadened
limitation) "relate[d] to subject matter that was surrendered
during prosecution of the original-filed claims." 415 F.3d at
1350, 75 USPQ2d at 1557. The Federal Circuit observed that "the
reissue claims were not narrowed with respect to the 'inner wall'
limitation, thus avoiding the recapture rule." The Federal
Circuit stated:
[t]hat the reissue claims, looked at as a whole, may be
of "intermediate scope" is irrelevant. . . . [T]he
recapture rule is applied on a limitation-by-limitation
basis, and ... [North American Container's] deletion of
the "generally convex" limitation clearly broadened the
"inner wall" limitation.
- 18 -18
Page: Previous 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Next
Last modified: November 3, 2007