Appeal No. 2005-0841
Application No. 08/230,083
ABCD (like added claim 15 from Application No. 07/642,475). The
examiner allows claim 3 and a patent issues with one claim to ABCD.
Within two years of the issuance of that patent, the applicant
files a reissue application adding a claim to ABCE. In the
prosecution of the reissue claim to ABCE, no prior art rejection is
made and it is clear that limitation E22 is not taught or suggested
by reference X. The majority would consider the claim to ABCE to
be barred by the "recapture rule" since that claim lacks the
limitation directed to the subject matter added to overcome a prior
art rejection (i.e., limitation D). We consider the claim to ABCE
to avoid the "recapture rule" since that claim is narrower in scope
than the surrendered subject matter (i.e., the claim to ABC) in all
aspects (i.e., that claim has not been broadened in any aspect
relative to the surrendered subject matter of ABC and has been
amended to be narrower than the surrendered subject matter of ABC
in at least one aspect by the addition of limitation E). The
majority's interpretation, we believe, is contrary to precedent
22 Limitation E is a totally distinct and separate limitation from
limitation D.
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