Appeal 2006-1068
Reissue Application 08/425,766
Substep (1): if the reissue claim is as broad as or broader than
the canceled or amended claim in all aspects, the recapture rule bars
the claim;
Substep (2): if it is narrower in all aspects, the recapture rules
does not apply, but other rejections are possible;
Substep (3): if the reissue claim is broader in some aspects, but
narrower in others, then:
(a) if the reissue claim is as broad as or broader in an
aspect germane to a prior art rejection, but narrower in another
aspect completely unrelated to the rejection, the recapture rule
bars the claim;
(b) if the reissue claim is narrower in an aspect
germane to [a] prior art rejection, and broader in an aspect
unrelated to the rejection, the recapture rule does not bar the
claim, but other rejections are possible.
(4)
North American Container
In North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d
1335, 75 USPQ2d 1545 (Fed. Cir. 2005), the Federal Circuit had occasion to
further address Substep (3)(a) of Clement.
North American Container involved a reissue patent, which had been held
invalid by the U.S. District Court for the Northern District of Texas. The district
court bottomed its invalidity holding based on a violation of the recapture rule.
During prosecution of an application for patent, an Examiner rejected the claims
26
Page: Previous 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33 Next
Last modified: November 3, 2007