Appeal No. 2005-2750
Application 09/460,221
spot on the second layer of said first disc with a diameter (D1) smaller
than a diameter (D2) of the light spot converged by said converging
means on the second layer of said second disc, and
wherein a thickness of each of said first layers of said N types of optical
discs is about 1.2mm or less.
In a non-final Office action dated August 16, 2002, the examiner rejected all of
the reissue claims on the ground of reissue recapture, citing Pannu v. Storz
Instruments, Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester
Industries Inc. v. Stein Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re
Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); and Ball Corp. v. United
States, 729 F.2d 1429, 221 USPQ 289 (Fed. Cir. 1984). On November 15, 2002,
appellants filed a notice of appeal, noting the twice-rejected status of the claims. The
opening brief was filed on January 15, 2003, the Answer was mailed on May 19, 2003,
and the reply brief was filed on July 30, 2003. On January 6, 2004, the application was
remanded to the examiner for the purpose of having him address Ex parte Eggert, 67
USPQ2d 1716 (Bd. Pat. App. & Int. 2003)(expanded panel)(precedential), which was
decided on May 29, 2003. A Supplemental Examiner’s Answer was mailed on January
24, 2005. A Supplemental Reply Brief was filed on March 24, 2005, and approved for
entry by the examiner.
G. The merits of the reissue recapture rejection
The recapture rule “prevents a patentee from regaining through reissue the
subject matter that he surrendered in an effort to obtain allowance of the original
claims.” Pannu, 258 F.3d at 1370-71, 59 USPQ2d at 1600 (quoting Clement, 131 F.3d
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