Appeal 2006-1068
Reissue Application 08/425,766
(3)
In re Clement
The Federal Circuit’s opinion in Clement discusses a three-step test for
analyzing recapture.
Step 1 involves a determination of whether and in what aspect any claims
sought to be reissued are broader than the patent claims. The Federal Circuit
reasoned that a reissue application claim deleting a limitation or element from a
patent claim is broader as to that limitation’s or element’s aspect. 131 F.3d at
1468, 45 USPQ2d at 1164.
Step 2 involves a determination of whether the broader aspects of the reissue
application claims relate to surrendered subject matter. 131 F.3d at 1468-69, 45
USPQ2d at 1164. In this respect, review of arguments and/or amendments during
the prosecution history of the application, which matured into the patent sought to
be reissued, is appropriate. In reviewing the prosecution history, the Federal
Circuit observed that “[d]eliberately canceling or amending a claim in an effort to
overcome a [prior art] reference strongly suggests that the applicant admits that the
scope of the claim before cancellation or amendment is unpatentable. 131 F.3d at
1469, 45 USPQ2d at 1164.
Step 3 is applied when the broadening relates to surrendered subject matter
and involves a determination whether the surrendered subject matter has crept into
the reissue application claim. Id. The following principles were articulated by the
Federal Circuit, 131 F.3d at 1470, 45 USPQ2d at 1165:
25
Page: Previous 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 Next
Last modified: November 3, 2007