Appeal No. 2005-0841
Application No. 08/230,083
to be balanced against the narrowing aspects of the reissue claims
to determine if the recapture rule bars the claims. Since the
Federal Circuit has never set forth any fact pattern where a
reissue claim falling into principle 3 of Clement which is broader
than the surrendered subject matter in an aspect germane to a prior
art rejection avoids the recapture rule, North American Container
is, in our view, an example of how the Federal Circuit balances the
broadening aspects of a reissue claim against the narrowing aspects
of the reissue claim to determine if the recapture rule bars the
claim. The Federal Circuit found in North American Container that
(1) the reissue claims are broader in scope than the
originally-issued claims in that they no longer require the "inner
walls" to be "generally convex"; (2) the broader aspect of the
reissue claims relates to subject matter that was surrendered
during prosecution of the originally-filed claims; (3) the reissue
claims were not narrowed sufficiently to avoid the recapture rule;
and (4) the reissue claims were invalid for violating the rule
against recapture.
Fatal flaw in majority decision
The fatal flaw in the majority decision is that they adopt an
interpretation of the phrase "surrendered subject matter" as used
in the context of recapture under 35 U.S.C. § 251 unsupported by
the case law. The plurality and concurring opinions view the
phrase "surrendered subject matter" as applied to the facts of this
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