Appeal No. 2005-0841
Application No. 08/230,083
in the prior art rejection. The first narrowing aspect is not
germane to the prior art rejection in the sense that it does not
overcome the prior art applied in the prior art rejection. The
second narrowing aspect is germane to the prior art rejection in
the sense that it overcomes the prior art applied in the prior art
rejection.39 Moreover, this second narrowing aspect is an
overlooked aspect of the invention since it had never been claimed
in the original patent application and is a material narrowing
since it is novel and unobvious over the prior art of record. See
Hester, id. Even assuming the "surrendered subject matter" to be
that set forth in the plurality and concurring opinions, claim 14
still would avoid the "recapture rule" because this second
narrowing aspect was a material and overlooked aspect of the
invention as more fully explained above.
In accordance with Clement, if a reissue claim is narrower in
an aspect germane to the prior art rejection, and broader in an
aspect unrelated to the rejection, the recapture rule does not bar
the claim. Since claim 14 is narrower than original patent
application claim 10 in an aspect germane to the prior art
rejection, and broader than original patent application claim 10 in
aspects unrelated to the rejection, the recapture rule does not bar
the claim.
For the reasons set forth above, we would reverse the decision
of the examiner to reject claim 14 under 35 U.S.C. § 251.
39 See footnote 35.
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