Appeal No. 2005-0841
Application No. 08/230,083
When viewed from the perspective of the concurring opinion (see
footnote 29) that the change of the limitation "[i]n a check valve
assembly in association with the ventilation system for the
passenger space of a motor vehicle" to "[a] check valve assembly
adaptable for use with a ventilation system for a passenger space
of a motor vehicle" is neither a broadening nor a material
narrowing, claim 14 would only be narrower than the surrendered
subject matter, thus falling into Clement principle (2) and
avoiding the recapture rule.
Viewed from an alternative perspective, claim 14 avoids the
recapture rule (1) regardless of whether the narrowing aspect of
this claim is considered germane to the prior art rejection and
perhaps more importantly, (2) regardless of how surrendered subject
matter is defined. That is, the recapture rule is avoided even if
surrendered subject matter is as defined in the plurality and
concurring opinions and even if the narrowing aspect of claim 14 is
completely unrelated to the rejection as determined expressly in
the concurring opinion and implicitly in the plurality opinion.
As explained in Hester, 142 F.3d at 1482-83, 46 USPQ2d at
1649-50, reissue claims which recapture surrendered subject matter
nevertheless may avoid the recapture rule
when the reissue claims are materially narrower in other
overlooked aspects of the invention. The purpose of this
exception to the recapture rule is to allow the patentee
to obtain through reissue a scope of protection to which
he is rightfully entitled for such overlooked aspects.
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