Appeal 2006-1068
Reissue Application 08/425,766
relies primarily on Hester Indus. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641
(Fed. Cir. 1998).
The Findings Support a Prima Facie Case of Unpatentability Based on Recapture
As previously indicated, the Examiner primarily relies on Hester Indus. v.
Stein, Inc., id. in support of his Section 251 rejection based on recapture. In
Hester, the court expressed the established principles that, under the recapture rule,
reissue claims are impermissible if broader than the original patent claims in a
manner directly pertinent to the subject matter surrendered during prosecution and
that a reissue claim which does not include a limitation present in the original
patent claims is broader in that respect. Id., 142 F.3d at 1480, 46 USPQ2d at 1648.
In assessing whether the broader aspects of reissue claims relate to surrendered
subject matter, the Hester court explained that, like claim cancellation or claim
amendment, arguments made to overcome prior art can equally evidence an
admission sufficient to give rise to a finding of surrender. Id., 142 F.3d at 1480-
81, 46 USPQ2d at 1648-49. Because the reissue claims of Hester did not include
certain limitations which were present in the original patent claims and which had
been repeatedly argued as distinguishing the original claims from the prior art, the
court determined that there had been a surrender of claim scope which did not
include these limitations. Id., 142 F.3d at 1482, 46 USPQ2d at 1649. Finally, the
court explained that the surrendered subject matter had crept back into the reissue
claims based on the simple analysis that the reissue
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