Appeal No. 2005-0841
Application No. 08/230,083
the inner walls was "generally convex" in each independent claim
while adding new limitations to each independent claim in an
attempt to overcome the 35 U.S.C. § 103 rejection made in the final
rejection in the ’607 application. Claims 42-68 in the ’799
application were allowed in a Quayle action mailed on February 16,
1991. Claims 42, 43, 45, 48, 51, 52, 54-57, 59 and 60 in the ’799
application were further amended on April 16, 1991 and new
dependent claim 69 was added. Claims 42-69 in the ’799 application
were allowed on June 27, 1991 and issued in the ’841 patent as
claims 1-28.
In our view, the above prosecution history of the ’841 patent
establishes finally rejected claims 15, 17-19, 24, 26-28, 33, 35,
37 and 39 in the '607 application containing the limitation that
the shape of the inner walls was "generally convex" to be
surrendered subject matter. Thus, the removal of the limitation
that the shape of the inner walls was "generally convex" results in
a claim that is broader than the surrendered subject matter in an
aspect germane to a prior art rejection. As such, the reissue
claims in North American Container were subject to a recapture
rejection, having fallen into principle 3 of Clement20 wherein the
reissue claims are broader than the surrendered subject matter in
some aspects, but narrower than the surrendered subject matter in
others, thus requiring the broadening aspects of the reissue claims
20 131 F.3d at 1470, 45 USPQ2d at 1165.
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