Appeal 2006-1068
Reissue Application 08/425,766
over a combination of two prior art references: Dechenne and Jakobsen. To
overcome the rejection, North American Container limited its application claims by
specifying that a shape of “inner walls” of a base of a container was “generally
convex.” North American Container convinced the examiner that the shape of the
base, as amended, defined over “both the Dechenne patent, wherein the
corresponding wall portions 3 are slightly concave . . . and the Jakobsen patent,
wherein the entire reentrant portion is clearly concave in its entirety.” 415 F.3d at
1340, 75 USPQ2d at 1549. After a patent issued containing the amended claims,
North American Container filed a reissue application seeking reissue claims in
which (1) the language “inner wall portions are generally convex” was eliminated,
but (2) the language “wherein the diameter of said re-entrant portion is in the range
of 5% to 30% of the overall diameter of said side wall” was added. Thus, the claim
sought be reissued was broader in some aspects and narrower in other aspects.
The Federal Circuit, applying the Clement three-step test, held that the
reissue claims were broader in scope than the originally-issued claims in that they
no longer require the “inner walls” to be “generally convex.” The Federal Circuit
further found that the broadened aspect (i.e., the broadened limitation) “relate[d] to
subject matter that was surrendered during prosecution of the original-filed
claims.” 415 F.3d at 1350, 75 USPQ2d at 1557. The Federal Circuit observed
“the reissue claims were not narrowed with respect to the ‘inner wall’ limitation,
thus avoiding the recapture rule.” The Federal Circuit stated:
[t]hat the reissue claims, looked at as a whole, may be of
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