Appeal No. 2005-0841
Application No. 08/230,083
In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir.
1997), relying heavily on the analysis in Ball and Mentor,
developed a three step test for determining whether the claims of
a reissue application recapture surrendered subject matter. The
first step is "to determine whether and in what 'aspect' the
reissue claims are broader than the patent claims." Clement at
1468, 45 USPQ2d at 1164. The Federal Circuit looked at the
individual limitations that have been broadened, stating that "a
reissue claim that deletes a limitation or element from the
patent claims is broader in that limitation's aspect." Id.
The second step of the test is "to determine whether the
broader aspects of the reissue claims relate to surrendered
subject matter." Id. at 1468-69, 45 USPQ2d at 1164. The Federal
Circuit looked to the prosecution history, focusing on arguments
and amendments made to overcome prior art rejections, stating
that "[d]eliberately canceling or amending a claim in an effort
to overcome a reference strongly suggests that the applicant
admits that the scope of the claim before cancellation or
amendment is unpatentable." Id. at 1469, 45 USPQ2d at 1164.
Thus, the scope of the claim prior to cancellation or amendment
is generally considered to be surrendered subject matter. In
fact, in setting up the third step, the Federal Circuit refers to
the applicant as having "surrendered the subject matter of the
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