Appeal No. 2005-0841
Application No. 08/230,083
there are limits on such broadening, such as a two year time
period in which to file a broadening reissue and the recapture
principle, a presumption of surrender and especially a burden on
the applicant to rebut that presumption appears to us to be in
conflict with the purpose of reissue. Accordingly, we would
affirm the examiner's rejection but for the reasons given infra.
PERTINENT CASE LAW
In Ball Corp. v. United States, 729 F.2d 1429, 221 USPQ 289
(Fed. Cir. 1984), the Federal Circuit stated that "[t]he
recapture rule bars the patentee from acquiring, through reissue,
claims that are of the same or of broader scope than those claims
that were canceled from the original application." Id. at 1436,
221 USPQ at 295. We note that the language used by the Federal
Circuit did not limit the bar to "only" those claims that were
canceled from the original application. The Federal Circuit
continued that "the patentee is free to acquire, through reissue,
claims that are narrower in scope than the canceled claims," but
recognized that "[t]he subject matter of the claims is not alone
controlling." Id. In other words, merely being narrower in
scope than the canceled claims may not be sufficient to overcome
the recapture bar. In fact, in analyzing the facts in Ball, the
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