Appeal No. 2005-0841
Application No. 08/230,083
Federal Circuit held that the reissue claims were narrower in
scope than the canceled claims with respect to the same
limitation relied upon to overcome a prior art rejection made in
the prosecution of the original application. Thus, although not
explicitly stated in Ball, there is a suggestion from the
analysis therein that the narrowing to overcome the recapture bar
should relate to the same limitation relied upon to overcome the
prior art rejection.
Mentor Corp. v. Coloplast Inc., 998 F.2d 992, 27 USPQ2d 1521
(Fed. Cir. 1993), affirmed the suggestion that surrendered
subject matter equates to that which does not include the
limitation added to overcome a prior art rejection.
Specifically, the Federal Circuit stated, "Coloplast correctly
argues that reissue claim 6, which does not include the adhesive
transfer limitation [which was added and argued to overcome the
prior art rejection], impermissibly recaptures what Mentor
deliberately surrendered in the original prosecution." Id. at
996, 27 USPQ2d at 1525. The Federal Circuit then determined
whether a narrowing of the claims had occurred that was "material
in relation to the impermissible broadening," Id. at 996, 27
USPQ2d at 1526, or, rather, in relation to the omission of the
limitation added for patentability.
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