Appeal No. 2005-0841
Application No. 08/230,083
Appendix 7
The court in Clement, 131 F.3d at 1468-70, 45 USPQ2d at
1163-65 stated that
[a]n attorney's failure to appreciate the full scope of
the invention qualifies as an error under section 251 and
is correctable by reissue. In re Wilder, 736 F.2d 1516,
1519, 222 USPQ 369, 370-71 (Fed. Cir. 1984).
Nevertheless, "deliberate withdrawal or amendment . . .
cannot be said to involve the inadvertence or mistake
contemplated by 35 U.S.C. § 251." Haliczer v. United
States, . . . 356 F.2d 541, 545, 148 USPQ 565, 569 ([Ct.
Cl.] 1966). The recapture rule, therefore, prevents a
patentee from regaining through reissue the subject
matter that he surrendered in an effort to obtain
allowance of the original claims. See Mentor, 998 F.2d
at 995, 27 USPQ2d at 1524. Under this rule, claims that
are "broader than the original patent claims in a manner
directly pertinent to the subject matter surrendered
during prosecution" are impermissible. Id. at 996, 27
USPQ2d at 1525.
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. For example, a
reissue claim that deletes a limitation or element from
the patent claims is broader in that limitation's aspect.
Clement argues that the board focused too much on the
specific limitations that were omitted from the reissue
claims. Although the scope of the claims is the proper
inquiry, In re Richman, . . . 409 F.2d 269, 274, 161 USPQ
359, 362 (CCPA 1969), claim language, including
limitations, defines claim scope. Abtox, Inc. v. Exitron
Corp., 122 F.3d 1019, 1023, 43 USPQ2d 1545, 1548 (Fed.
Cir. 1997); Bell Communications Research, Inc. v.
Vitalink Communications Corp., 55 F.3d 615, 619, 34
USPQ2d 1816, 1819 (Fed. Cir. 1995) ("[T]he language of
the claim defines the scope of the protected
invention."). Under Mentor, courts must determine in
which aspects the reissue claim is broader, which
includes broadening as a result of an omitted limitation.
The board did not err by determining which limitations
Clement deleted from the patent claims.
A-15
Page: Previous 114 115 116 117 118 119 120 121 122 123 124 125 126 127 128 Next
Last modified: November 3, 2007