Appeal No. 2005-0841
Application No. 08/230,083
The second step is to determine whether the broader
aspects of the reissue claims relate to surrendered
subject matter. To determine whether an applicant
surrendered particular subject matter, we look to the
prosecution history for arguments and changes to the
claims made in an effort to overcome a prior art
rejection. See Mentor, 998 F.2d at 995-96, 27 USPQ2d at
1524-25; Ball Corp. v. United States, 729 F.2d 1429,
1436, 221 USPQ 289, 294-95 (Fed. Cir. 1984).
Although the recapture rule does not apply in the
absence of evidence that the applicant's amendment was
"an admission that the scope of that claim was not in
fact patentable," Seattle Box Co. v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed.
Cir. 1984), "the court may draw inferences from changes
in claim scope when other reliable evidence of the
patentee's intent is not available," Ball, 729 F.2d at
1436, 221 USPQ at 294. Deliberately canceling or
amending a claim in an effort to overcome a reference
strongly suggests that the applicant admits that the
scope of the claim before the cancellation or amendment
is unpatentable, but it is not dispositive because other
evidence in the prosecution history may indicate the
contrary. . . . Amending a claim "by the inclusion of an
additional limitation [has] exactly the same effect as if
the claim as originally presented had been canceled and
replaced by a new claim including that limitation." In
re Byers, . . . 230 F.2d 451, 455, 109 USPQ 53, 55 (CCPA
1956).
Once we determine that an applicant has surrendered
the subject matter of the canceled or amended claim, we
then determine whether the surrendered subject matter has
crept into the reissue claim. Comparing the reissue
claim with the canceled claim is one way to do this. In
re Wadlinger, 496 F.2d 1200, 1204, 181 USPQ 826, 830
(CCPA 1974); Richman, 409 F.2d at 274, 161 USPQ at 362.
If the scope of the reissue claim is the same as or
broader than that of the canceled claim, then the
patentee is clearly attempting to recapture surrendered
subject matter and the reissue claim is, therefore,
unallowable. Ball, 729 F.2d at 1436, 221 USPQ at 295
("The recapture rule bars the patentee from acquiring,
through reissue, claims that are the same or of broader
scope than those claims that were canceled from the
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