Appeal No. 2005-0841
Application No. 08/230,083
claims may not have been enlarged, and hence avoid the
recapture rule. Id. at 1371 (citations omitted).
NAC appeals from the district court’s summary judgment
holding reissue claims 29-42 invalid for violation of the
recapture rule. According to NAC, the court improperly
grounded its invalidity decision on the applicant’s
arguments and amendments in view of the prior art
Dechenne patent and rendered an unduly narrow
interpretation of the "generally convex" claim
limitation. In doing so, NAC argues mainly that the
court failed to give the patent examiner "the deference
that is due to a qualified government agency presumed to
have properly done its job." Appellant’s Opening Br., at
50 (citing McGinley v. Franklin Sports, Inc., 262 F.3d
1339, 1353 [60 USPQ2d 1001] (Fed. Cir. 2001)). According
to NAC, during the reissue proceedings, Plastipak
submitted, and the patent examiner rejected, protests
making the same recapture arguments that Plastipak made
to the court.
Plastipak argues that the applicant violated the
recapture rule by removing in the reissue proceedings the
"generally convex" restriction from the "inner wall"
limitation. According to Plastipak, the applicant
amended his claims to add the "generally convex"
limitation to the inner walls in order to overcome the
Dechenne patent, which was "slightly concave." With
respect to NAC’s argument that the district court did not
give the patent examiner due deference, Plastipak
reasserts the court’s position that the patent examiner
misapplied the recapture rule, and thus any presumption
that the examiner properly did his job was rebutted.
We agree that NAC violated the recapture rule, and
thus the reissue claims are invalid. Applying our
three-part test, we find that the reissue claims are
broader in scope than the originally-issued claims in
that they no longer require the "inner walls" to be
"generally convex." Moreover, the broader aspect of the
reissue claims relates to subject matter that was
surrendered during prosecution of the original-filed
claims. Indeed, during prosecution, the applicant
conceded that the pending independent claims "have been
amended to refer to the convex nature of the inner wall
portions of the central re-entrant portion." '607
Application, Paper No. 6, at 10. The applicant even
argued that the "shape of the base as now defined in the
A-44
Page: Previous 137 138 139 140 141 142 143 144 145 146 147 148 149 150 151 Next
Last modified: November 3, 2007