Appeal No. 2005-2750
Application 09/460,221
at 1468, 45 USPQ2d at 1164). Reissued claims that are broader than the original
patent's claims in a manner directly pertinent to the subject matter surrendered during
prosecution are impermissible. Pannu, 258 F.3d at 1371, 59 USPQ2d at 1600 (citing
Clement, 131 F.3d at 1468, 45 USPQ2d at 1164, and Mentor Corp. v. Coloplast, Inc.,
998 F.2d 992, 996, 27 USPQ2d 1521, 1525 (Fed. Cir. 1993)). Pannu explains:
Application of the recapture rule is a three-step process. The first step is
to “determine whether and in what `aspect' the reissue claims are broader
than the patent claims.” [Clement, 131 F.3d at 1468, 45 USPQ2d at 1164.]
“The second step is to determine whether the broader aspects of the
reissued claim related to surrendered subject matter.” Id. Finally, the
court must determine whether the reissued claims were materially
narrowed in other respects to avoid the recapture rule. Hester, 142 F.3d
at 1482-83, 46 USPQ2d at 1649-50; Clement, 131 F.3d at 1470, 45
USPQ2d at 1165.
238 F.3d at 1370-71; 59 USPQ2d at 1600. Accord, Eggert, 67 USPQ2d at 1727; North
American Container Inc. v. Plastipak Packaging Inc., 415 F.3d 1335, 1350, 75 USPQ2d
1545, 1556 (Fed. Cir. 2005); MPEP § 1402.02 (8th ed., rev. 3, Aug. 2005), at 1400-17.
Because claims 1 and 6 of the ‘629 application were rejected under § 112, ¶ 2 as
well as over prior art, we will begin our analysis by addressing the second step of the
Pannu analysis, more particularly by considering whether appellants are correct to
argue that treating canceled claims 1 and 6 as representing surrendered subject matter
under the second step of Pannu is precluded by the fact that those claims stood
rejected for indefiniteness under § 112, ¶ 2, in support of which argument they cite In re
Wesseler, 367 F.2d 838, 151 USPQ 339 (CCPA 1966). If appellants’ argument is
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