Appeal No. 2005-0841
Application No. 08/230,083
APPLICATION OF THE RECAPTURE DOCTRINE TO CLAIM 16
Applying the test set forth in Clement, we first "determine
whether and in what 'aspect' the reissue claim[] . . . [is]
broader than the patent claims." Id. at 1468, 45 USPQ2d at 1164.
Since claim 16 recites a locking element, patent claims 10 and 11
are the closest to reissue claim 16. Claim 16 is broader than
patent claim 10 in that the inner frame limitation, as well as
"wherein the clip connection (6) comprises a springy tongue
(22')," have been deleted. In addition, claim 16 is broader than
patent claim 11 in that the limitation "wherein the clip
connection (6) comprises a springy tongue (22') . . . arranged on
a locking element (30) . . . said locking element (30) being
guided over a dovetail guide (31) on the outer surface of the
outer housing (3)" has been deleted.12
The second step of the Clement test, as discussed supra, is
"to determine whether the broader aspects of the reissue claims
relate to surrendered subject matter." Id. at 1468-69, 45 USPQ2d
at 1164. As explained supra, the prosecution history of
Application 07/642,475 set forth above establishes that the
12 Reissue claim 16 also differs from both patent claim 10 and also patent
claim 11 in that the limitation "[i]n a check valve assembly in association with
the ventilation system for the passenger space of a motor vehicle" has been
changed to "[a] check valve assembly adaptable for use with a ventilation system
for a passenger space of a motor vehicle." This alteration is neither a
broadening nor a material narrowing.
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