Appeal No. 2005-0841 Application No. 08/230,083 Reasonably viewed in light of the record as a whole, this limitation materially narrows claim 14 to the extent necessary to avoid the recapture rule and allows the appellant to obtain through reissue a scope of protection to which he is rightfully entitled for an overlooked aspect of his invention. The majority’s conclusion to the contrary stems from analyses which, among other faults, attach too much weight to the broadened aspects of claim 14 and too little, if any, weight to the materially narrowed aspect of the claim. Claim 16, on the other hand, includes no materially narrowing limitation and has a scope essentially similar to that of original application claim 11 which was amended in light of a prior art rejection. Thus, claim 16 would allow the appellant to regain through reissue subject matter that was surrendered to obtain the patent. Accordingly, the decision of the examiner to reject claims 14 and 16 under 35 U.S.C. § 251 should be reversed with respect to claim 14 and affirmed with respect to claim 16. ) BOARD OF PATENT JOHN P. MCQUADE ) APPEALS Administrative Patent Judge ) AND ) INTERFERENCES -105-Page: Previous 98 99 100 101 102 103 104 105 106 107 108 109 110 111 112 NextLast modified: November 3, 2007