Appeal No. 2005-0841
Application No. 08/230,083
27 USPQ2d at 1525). Application of the recapture rule
begins with a determination of whether and in what
respect the reissue claims are broader than the original
patent claims. See id. A reissue claim that does not
include a limitation present in the original patent
claims is broader in that respect. See id. Here, it is
undisputed that the asserted reissue claims are broader
than the original patent claims in that the reissue
claims do not include the "solely with steam" and "two
sources of steam" limitations found in each of the
original patent claims.
Having determined that the reissue claims are broader
in these respects, under the recapture rule we next
examine whether these broader aspects relate to
surrendered subject matter. See id. at 1468-69, 131 F.3d
1464, 45 USPQ2d at 1164. "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." Id. at 1469, 131 F.3d 1464, 45 USPQ2d at
1164 (emphasis added). This statement in Clement
indicates that a surrender can occur by way of arguments
or claim changes made during the prosecution of the
original patent application. To date, the cases in which
this court has found an impermissible recapture have
involved claim amendments or cancellations. See, e.g.,
id. at 1469-70, 131 F.3d 1464, 45 USPQ2d at 1164-65;
Mentor, 998 F.2d at 995-96, 27 USPQ2d at 1524-25.
However, in addition to the suggestion in Clement that
argument alone can effect a surrender, this court
expressly left open that possibility in Ball Corp. v.
United States: "If reissue is sought where claims have
not been previously canceled, analysis becomes more
difficult. In that case relative claim scope is not
available to illuminate the alleged error. We are not
faced with that situation in this proceeding." 729 F.2d
1429, 1436 n.19, 221 USPQ 289, 295 n.19 (Fed. Cir. 1984).
Prior to this case, this court has not squarely addressed
the question.
. . . .
Thus we conclude that, in a proper case, a surrender
can occur through arguments alone. We next evaluate
whether such a surrender occurred here with respect to
the "solely with steam" and "two sources of steam"
A-35
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