Appeal No. 2005-0841
Application No. 08/230,083
individual feature or element purportedly given up during
prosecution of the original application. The trial judge
quite properly focused on the scope of the claims and we
find no error in this respect. He determined that the
reissue claims were intermediate in scope -- broader than
the claims of the original patent yet narrower than the
canceled claims. [Footnotes omitted]
The Court in Ball found (729 F.2d at 1438, 221 USPQ at 296) that
the reissue claims (which were broader than the canceled claims in
one respect and narrower than the canceled claims in some respects)
were valid. Specifically, the Court found that the non-material,
broader aspects of Ball's reissue claims do not deprive them of
their fundamental narrowness of scope relative to the canceled
claims. Thus, the reissue claims were sufficiently narrower than
the canceled claims to avoid the effect of the recapture rule.
The court in Whittaker, 911 F.2d at 713, 15 USPQ2d at 1745
stated:
Since we hold that the claims of the reissue patent
are narrower in scope than the cancelled original claims
of the application that resulted in the '882 patent, the
'453 patent cannot be held invalid under the recapture
rule as described in Ball Corp. v. United States, 729
F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984) ("the
patentee is free to acquire, through reissue, claims that
are narrower in scope than the canceled claims."
(emphasis in original))
The court in Mentor, 998 F.2d at 995, 27 USPQ2d at 1524 stated
that
[r]eissue "error" is generally liberally construed,
and we have recognized that "[a]n attorney's failure to
appreciate the full scope of the invention" is not an
A-29
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