Appeal No. 2005-0841
Application No. 08/230,083
According to the principles set forth by the Federal
Circuit, if the reissue claims are as broad in all aspects as
the claims prior to the amendment, then the recapture rule bars
the claims. As stated supra, the addition of a limitation to
overcome a prior art rejection suggests an admission that the
scope of the claim prior to the amendment is unpatentable.
Therefore, if all limitations of the reissue claim are at least
as broad as the claim prior to the amendment, then the recapture
rule bars the claim. Additionally, if the reissue claim is at
least as broad in an aspect related to a prior art rejection
(i.e., the limitation added to overcome the reference), even if
narrower in an aspect unrelated to the prior art rejection, then
the recapture rule bars the claims. In other words, completely
eliminating a limitation added to overcome a prior art rejection,
even if accompanied by a narrowing in another area, is barred by
the recapture rule.
However, if the reissue claims are narrower in all aspects
(including the limitation added to overcome the reference) or in
an aspect related to a prior art rejection (i.e., with regard to
the limitation added to overcome the reference), even if broader
in other areas, then the recapture rule does not apply. Thus, a
narrowing of the claim in the area of the limitation that
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