Appeal No. 2005-0841
Application No. 08/230,083
Similarly, in Ball, the issued claim recited "a
plurality of feedlines" and a "substantially cylindrical
conductor." 729 F.2d at 1432-33, 221 USPQ at 291-92. The
canceled claim recited "feed means includ[ing] at least
one conductive lead," and a "substantially cylindrical
conductor." The prosecution history showed that the
patentee added the "plurality of feedlines" limitation in
an effort to overcome prior art, but the cylindrical
configuration limitation was neither added in an effort
to overcome a prior art rejection, nor argued to
distinguish the claims from a reference. Id. The
reissue claim included limitations not present in the
canceled claims that related to the feed means element,
but allowed for multiple feedlines. On balance, the
claim was narrower than the canceled claim with respect
to the feed means aspect. The reissue claim also deleted
the cylindrical configuration limitation, which made the
claim broader with respect to the configuration of the
conductor. Id. at 1437, 729 F.2d 1429, 221 USPQ at 295.
We allowed the reissue claim because the patentee was not
attempting to recapture surrendered subject matter. Id.
at 1438, 729 F.2d 1429, 221 USPQ at 296.
In both Mentor and Ball, the relevance of the prior
art rejection to the aspects narrowed in the reissue
claim was an important factor in our analysis. From the
results and reasoning of those cases, the following
principles flow: (1) if the reissue claim is as broad as
or broader than the canceled or amended claim in all
aspects, the recapture rule bars the claim; (2) if it is
narrower in all aspects, the recapture rule does not
apply, but other rejections are possible; (3) if the
reissue claim is broader in some aspects, but narrower in
others, then: (a) if the reissue claim is as broad as or
broader in an aspect germane to a prior art rejection,
but narrower in another aspect completely unrelated to
the rejection, the recapture rule bars the claim; (b) if
the reissue claim is narrower in an aspect germane to
prior art rejection, and broader in an aspect unrelated
to the rejection, the recapture rule does not bar the
claim, but other rejections are possible. Mentor is an
example of (3)(a); Ball is an example of (3)(b).
A-18
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