Appeal No. 2005-0841
Application No. 08/230,083
limitations, the pertinent aspects in which the asserted
reissue claims are broader than the original patent
claims. The obvious conclusion is that there has been a
surrender.
. . . .
Having concluded that there has been a surrender, we
must next determine whether the surrendered subject
matter has crept back into the asserted reissue claims.
See Clement, 131 F.3d at 1469, 45 USPQ2d at 1164. When
the surrender occurs by way of claim amendment or
cancellation, "[c]omparing the reissue claim with the
canceled claim is one way to do this." See id. This
analysis is not available when the surrender is made by
way of argument alone. Instead, in this case, we simply
analyze the asserted reissue claims to determine if they
were obtained in a manner contrary to the arguments on
which the surrender is based.
Clearly they were. None of the asserted reissue
claims include either the "solely with steam" limitation
or the "two sources of steam" limitation. Thus, this
surrendered subject matter -- i.e., cooking other than
solely with steam and with at least two sources of steam
-- has crept into the reissue claims. The asserted
reissue claims are unmistakably broader in these
respects.
Finally, because the recapture rule may be avoided in
some circumstances, we consider whether the reissue
claims were materially narrowed in other respects. See,
e.g., Mentor, 998 F.2d at 996, 27 USPQ2d at 1525
("Reissue claims that are broader in certain respects and
narrower in others may avoid the effect of the recapture
rule."); Clement, 131 F.3d at 1470, 45 USPQ2d at 1165.
For example, in Ball the recapture rule was avoided
because the reissue claims were sufficiently narrowed
(described by the court as "fundamental narrowness")
despite the broadened aspects of the claims. 729 F.2d
at 1438, 221 USPQ at 296. In the context of a surrender
by way of argument, this principle, in appropriate cases,
may operate to overcome the recapture rule when the
reissue claims are materially narrower in other
overlooked aspects of the invention. The purpose of this
exception to the recapture rule is to allow the patentee
to obtain through reissue a scope of protection to which
he is rightfully entitled for such overlooked aspects.
A-36
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