Appeal No. 2005-0841
Application No. 08/230,083
invention on the basis of the "solely with steam" and
"two sources of steam" limitations belied Williams'
assertion that his attorney failed to appreciate the full
scope of his invention. Id. at 1409-11. The court also
determined that there was no other form of § 251 "error"
and thus held the asserted reissue claims invalid. Id.
at 1411-12. 2
We share the district court's discomfort with
Williams' attempt to remove, through reissue, the "solely
with steam" and "two sources of steam" limitations after
having relied so heavily on those limitations to obtain
allowance of the original patent claims over the prior
art. This concern is addressed most squarely by the
"recapture rule," recently discussed at length in
Clement, 131 F.3d 1464, 45 USPQ2d 1161. The recapture
rule "prevents a patentee from regaining through reissue
. . . subject matter that he surrendered in an effort to
obtain allowance of the original claims." Clement, 131
F.3d at 1468, 45 USPQ2d at 1164. The rule is rooted in
the "error" requirement in that such a surrender is not
the type of correctable "error" contemplated by the
reissue statute. See Mentor, 998 F.2d at 995-96, 27
USPQ2d at 1525.
In its motion for summary judgment, Stein presented
the recapture rule as one basis for finding the asserted
reissue claims invalid, and Stein repeats this argument
on appeal as one basis for affirming the summary judgment
of invalidity. While the district court did not
explicitly rule on this ground, its opinion indicates the
view that Hester, through the reissue patents, recaptured
surrendered subject matter. Hester, 963 F. Supp. at 1412
(stating that through the reissues, Hester obtained
claims covering "ovens with characteristics repeatedly
distinguished and disclaimed in the PTO" and that was
contrary to the "error" requirement of § 251). As will
be next explained, we conclude that the asserted reissue
claims violate the recapture rule and that the summary
judgment ruling is appropriately affirmed on this ground.
"Under [the recapture] rule, claims that are 'broader
than the original patent claims in a manner directly
pertinent to the subject matter surrendered during
prosecution' are impermissible." Clement, 131 F.3d at
1468, 45 USPQ2d at 1164 (quoting Mentor, 998 F.2d at 996,
A-34
Page: Previous 133 134 135 136 137 138 139 140 141 142 143 144 145 146 147 Next
Last modified: November 3, 2007