Appeal No. 2005-0841
Application No. 08/230,083
The first step in applying the recapture rule is to determine
whether and in what "aspect" the reissue claims are broader than
the patent claims.
The second step is to determine whether the broader aspects of
the reissue claims relate to surrendered subject matter. Thus, one
looks to the prosecution history for arguments and changes to the
claims made in an effort to overcome a prior art rejection to
determine what surrendered subject matter exists, if any. If no
surrendered subject matter exists, then the "recapture rule" does
not apply. If surrendered subject matter exists, it must then be
determined whether the surrendered subject matter has crept into
the reissue claims. Accordingly, the reissue claim must be
compared with the surrendered subject matter. If the scope of the
reissue claim is as broad as or broader than the surrendered
subject matter in all aspects (i.e., a claim that has not been
narrowed in any aspect relative to the surrendered subject matter),
then the recapture rule bars the claim. In contrast, a reissue
claim narrower in scope than the surrendered subject matter in all
aspects (i.e., a claim that has not been broadened in any aspect
relative to the surrendered subject matter and has been amended to
be narrower than the surrendered subject matter in at least one
aspect) escapes the recapture rule entirely. However, if the
reissue claim is broader than the surrendered subject matter in
some aspects, but narrower than the surrendered subject matter in
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