Appeal No. 2005-0841
Application No. 08/230,083
including claims in which the language "inner wall portions are
generally convex" was eliminated, but the language "wherein the
diameter of said re-entrant portion is in the range of 5% to 30%
of the overall diameter of said side wall" was added to some of
the claims.
The Federal Circuit applied the three step test of Clement.
The Federal Circuit found that the reissue claims were "broader
in scope than the originally-issued claims in that they no longer
require the 'inner walls' to be 'generally convex.'" Id. at 1350,
75 USPQ2d at 1557. Further, the broadened aspect (i.e., the
broadened limitation) "relate[d] to subject matter that was
surrendered during prosecution of the original-filed claims."
Id. However, the Federal Circuit found that "the reissue claims
were not narrowed with respect to the 'inner wall' limitation,
thus avoiding the recapture rule." Id. The Federal Circuit
stated, "[t]hat the reissue claims, looked at as a whole, may be
of 'intermediate scope' is irrelevant. . . . [T]he recapture
rule is applied on a limitation-by-limitation basis, and the
applicant's deletion of the 'generally convex' limitation clearly
broadened the 'inner wall' limitation." Id.
It is important to note that the Federal Circuit determined
that the re-entrant portion (the element further narrowed in the
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