Appeal No. 2005-0841
Application No. 08/230,083
respect to the same limitations, that prompted a finding of
surrendered subject matter.
By analyzing the reasoning in Mentor and Ball, the Federal
Circuit arrived at the following principles as an approach to the
third step:
(1) if the reissue claim is as broad as or broader than
the canceled or amended claim in all aspects, the
recapture rule bars the claim; (2) if it is narrower in
all aspects, the recapture rule does not apply, but
other rejections are possible; (3) if the reissue claim
is broader in some aspects, but narrower in others,
then: (a) if the reissue claim is as broad as or
broader in an aspect germane to a prior art rejection,
but narrower in another aspect completely unrelated to
the rejection, the recapture rule bars the claim; (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.
Clement at 1470, 45 USPQ2d at 1165. The third step of the test
in Clement compares the reissue claims to the canceled claims,
i.e., the claims of the patented application (upon which the
reissue is based) prior to the amendment that resulted in the
patent. We note that the test uses the phrase "canceled or
amended," which as indicated supra, we assume includes something
more than the canceled claim. Again we will focus on the
"canceled" claim only, as the alternative language appears to be
cumulative in our interpretation of the test.
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