Appeal No. 2005-0841
Application No. 08/230,083
A precedential opinion concerning a reissue recapture
rejection under 35 U.S.C. § 251 was entered by the Board of Patent
Appeals and Interferences on May 29, 2003 in Ex parte Eggert, 67
USPQ2d 1716 (Bd. Pat. App. & Int. 2003). In Eggert, the majority
opinion applied the fact-specific analysis set forth in Clement
and determined that under the facts and circumstances before it,
the "surrendered subject matter" was claim 1 of Eggert as that
claim existed prior to the post-final rejection amendment that led
to the allowance of claim 1 in the original patent, and decided
that reissue claims 15-22 of Eggert were not precluded (i.e.,
barred) by the "recapture rule." 67 USPQ2d at 1730-33.
In North American Container, 415 F.3d at 1349-50, 75 USPQ2d at
1556-57, the court again followed the analytical process of Clement
and found that the "recapture rule" applied. Specifically, the
court stated:
Under the recapture rule, a patentee is precluded "from
regaining the subject matter that he surrendered in an effort
to obtain allowance of the original claims." Id. at 1370-71
[citing to Pannu v. Storz Instruments, Inc., 258 F.3d 1366, 59
USPQ2d 1597 (Fed. Cir. 2001)] (citing In re Clement, 131 F.3d
1464, 1468 [45 USPQ2d 1161, 1164] (Fed. Cir. 1997)). When
that has occurred, the patent is invalid. Id. at 1368. We
apply the recapture rule as a three-step process: (1) first,
we determine whether, and in what respect, the reissue claims
are broader in scope than the original patent claims; (2)
next, we determine whether the broader aspects of the reissue
claims relate to subject matter surrendered in the original
prosecution; and (3) finally, we determine whether the reissue
claims were materially narrowed in other respects, so that the
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