Appeal No. 2005-0841
Application No. 08/230,083
Circuit, to mean that, where a patentee is seeking to recover in a
reissue claim subject matter broader than that surrendered during
prosecution, the mere presence of narrowing limitations in the
reissue claim is not necessarily sufficient to save the reissue
claim from the recapture rule.
Our view is consistent with North American Container, Inc. v.
Plastipak Packaging, Inc., et al., 415 F.3d 1335, 1349-50, 75
USPQ2d 1545, 1556-57 (Fed. Cir. 2005). The prosecution history of
U.S. Patent 5,072,841 ("the ’841 patent"), which issued from
Application 07/577,799, a file-wrapper-continuation of Application
07/112,607 ("the ’607 application") was as follows. The ’607
application was filed with claims 1-14. The first office action
(mailed 5/25/1989) in the ’607 application rejected claims 1-3 and
8-12 as obvious over U.S. Patent 4,231,483 to Dechenne in view of
U.S. Patent 4,467,929 to Jakobsen. Claims 4-7, 13 and 14 were
objected to as improper dependent claims. An amendment was filed
August 28, 1989 in the ’607 application canceling claims 1-14 and
adding claims 15-41. This amendment included the limitation that
the shape of the inner walls was "generally convex" in each
independent claim. A final rejection was mailed December 7, 1989
in the ’607 application rejecting claims 15, 17-19, 24, 26-28, 33,
35, 37 and 39 under 35 U.S.C. § 103. The ’799 application was then
filed with a pre-amendment canceling claims 15-41 and adding claims
42-68. This amendment maintained the limitation that the shape of
-83-
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