Appeal No. 2006-2248
Application No. 10/158,618
precedent of our past and present reviewing courts but also is potentially contrary
to a reissue Applicant’s right under 35 U.S.C. § 251 to enlarged claim scope.
For these reasons, I disagree with the majority’s definition of surrendered
subject matter and concomitantly with the analysis based thereon. Nevertheless,
for the reasons which follow, I agree with the majority’s determination that we
should sustain the Examiner’s Section 251 rejection based on recapture.
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. The second step is to determine whether the broader aspects of the reissue
claims relate to surrendered subject matter. The third step is to determine whether
the reissue claims are materially narrowed in other respects to avoid the recapture
rule. Pannu v. Storz Instruments, Inc., 258 F.3d 1366, 1371, 59 USPQ2d 1597,
1600 (Fed. Cir. 2001). Also see Hester Indus., 142 F.3d at 1482-83, 46 USPQ2d at
1649-50; Clement, 131 F.3d at 1468-69, 45 USPQ2d at 1164.
Concerning the first step, for the reasons detailed in the majority’s Opinion
and the Examiner’s Answer, the argued reissue claims on appeal (i.e., claims 2 and
9) are unquestionably broader in scope than patent claim 1 with respect to
compositional ingredients and amounts.
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