Appeal No. 2005-0841
Application No. 08/230,083
others, then the broadening aspects of the reissue claim must be
balanced against the narrowing aspects of the reissue claim to
determine if the recapture rule bars the claim.28
APPLICATION OF THE RECAPTURE RULE TO CLAIM 14
As noted in Clement, the first step in applying the recapture
rule is to determine whether and in what "aspect" the reissue claim
is broader than the patent claims. This step of the analysis is
important to ensure that the appellant has not run afoul of the
two-year limitation on broadening, and, if broadening has occurred,
to establish exactly in what aspects such broadening has occurred.
Claim 14 is broader than patent claim 1 in that the limitation
"wherein the inner frame (4) has a surrounding rim (7) carrying rib
members (8) spaced transversely with stays (9) extending therefrom
and a surrounding frame (10) joining the stays (9)" has been
deleted.29
Claim 14 is broader than patent claim 11 in that the
limitation "wherein the clip connection (6) comprises a springy
tongue (22') formed separate from the outer housing (3), said
28 See Clement; Mentor; Ball; Pannu., 258 F.3d at 1370-71, 59 USPQ2d at
1600; North American Container, 415 F.3d at 1349-50, 75 USPQ2d at 1556-57; and Ex
parte Eggert, 67 USPQ2d 1716 (Bd. Pat. App. & Int. 2003).
29 In addition, the limitation "[i]n a check valve assembly in
association with the ventilation system for the passenger space of a motor
vehicle" has been changed to "[a] check valve assembly adaptable for use with a
ventilation system for a passenger space of a motor vehicle." The concurring
opinion (see footnote 11) views this change as neither a broadening nor a
material narrowing. We view this change as being a slight broadening in an
aspect that is clearly not germane to the prior art rejection.
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