Appeal No. 2006-0386
Application 09/460,222
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
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.
14
Page: Previous 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 Next
Last modified: November 3, 2007