Appeal No. 2005-0841
Application No. 08/230,083
recapture rule discussed in Clement at 1468, 45 USPQ2d at 1164.
Hester at 1480, 46 USPQ2d at 1647.
After determining that the reissue claims in Hester did
include surrendered subject matter, the Federal Circuit
recognized that "the recapture rule may be avoided in some
circumstances." Id. at 1482, 46 USPQ2d at 1649. Therefore, the
Federal Circuit continued its analysis by determining "whether
the reissue claims were materially narrowed in other respects.
See, e.g., Mentor, 998 F.2d at 996, 27 USPQ2d at 1525 ('Reissue
claims that are broader in certain respects and narrower in
others9 may avoid the effect of the recapture rule.'); Clement,
131 F.3d at 1470, 45 USPQ2d at 1165." Hester at 1482, 46 USPQ2d
at 1649. The Federal Circuit found that the alleged narrowing
aspects were not overlooked during the prosecution of the
original patent and, therefore, that the case was not one "which
involve[d] the addition of material limitations that overcome the
recapture rule." Id. at 1483, 46 USPQ2d at 1650.
Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d
1597 (Fed. Cir. 2001) revisited reissue recapture. In an
9 Although the Federal Circuit referred to other respects in this quote
from Mentor, later in its opinion the Federal Circuit indicated that the other
respects must relate to the limitation that was broadened. Mentor at 996, 27
USPQ2d at 1525. Further, the Federal Circuit in Clement indicated in step three
of the test that they too interpreted other respects as relating to the
limitation that was broadened. See step 3(a) of the Clement test. Clement at
1470, 45 USPQ2d at 1166.
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