Appeal No. 2005-0841
Application No. 08/230,083
claims differs from those of . . . the Dechenne patent,
wherein the corresponding wall portions are slightly
concave." Id. (emphasis added). Finally, the reissue
claims were not narrowed with respect to the "inner wall"
limitation, thus avoiding the recapture rule.
We reject NAC’s argument that the district court did
not give the patent examiner due deference in finding the
reissue claims invalid. The examiner’s basis for denying
the protests filed against the reissue claims, i.e., that
the claims "are considered to be of intermediate scope
and the deleted language . . . directed to the convexity
of the inner wall . . . are not considered to be critical
limitations," demonstrates the examiner’s inattention to
the rule against recapture. '918 Application, Paper No.
29, at 4. For the reasons set forth above, the deleted
language was critical in that it allowed the applicant to
overcome the Dechenne reference. Moreover, that the
reissue claims, looked at as a whole, may be of
"intermediate scope" is irrelevant. As the district
court recognized, the recapture rule is applied on a
limitation-by-limitation basis, and the applicant’s
deletion of the "generally convex" limitation clearly
broadened the "inner wall" limitation. Thus, reissue
claims 29-42 are invalid for violating the rule against
recapture.
A-45
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