Appeal No. 2005-0841
Application No. 08/230,083
original application.") (emphasis omitted); Byers, 230
F.2d at 456, 109 USPQ at 56. In contrast, a reissue
claim narrower in scope escapes the recapture rule
entirely. Ball, 729 F.2d at 1436, 221 USPQ at 295.
Some reissue claims, however, are broader than the
canceled claim in some aspects, but narrower in others.
In Mentor, for example, the issued claim, which was
directed to a condom catheter, recited an adhesive means
that was transferred from an outer to an inner surface
without turning the condom inside-out. 998 F.2d at 993,
27 USPQ2d at 1523. The issued claim also recited, inter
alia, that the condom catheter included a "thin
cylindrical sheath member of resilient material rolled
outwardly upon itself to form consecutively larger rolls
. . . ." One canceled claim recited an adhesive means
between the rolls, but did not specify that the adhesive
was transferred from the outer to the inner surface
without turning the condom inside-out. Another canceled
claim recited that adhesive was transferred from the
outer to the inner surface, but did not specify that this
operation was done without turning the condom inside-out.
The prior art rejections focused on the obviousness of
the adhesive means positioned between the rolls and the
process of transferring adhesive to the inner surface of
the condom.
In making amendments to the claim, the applicant
argued that "none of the references relied upon actually
showed the transfer of adhesive from the outer surface to
the inner surface as the sheath is rolled up and then
unrolled." Id. at 995-96, 998 F.2d 992, 27 USPQ2d at
1524-25 (emphasis in original). The reissue claim
eliminated the limitation that adhesive was transferred
from the outer to the inner layer, and was, therefore,
broader in this aspect. The reissue claim was also
narrower than the canceled claim because it recited that
the catheter included "a thin, flexible cylindrical
member of resilient material rolled outwardly upon itself
to form a single roll. . . ." (Emphasis added). We held
that, although the "flexible" and "single roll"
limitations made the reissue claim narrower than both the
canceled and issued claims, it did not escape the
recapture rule because these limitations did not
"materially narrow the claim[]." Id. at 996-97,
27 USPQ2d at 1525-26.
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