Ex Parte GEDNEY et al - Page 33



             Appeal 2006-1454                                                                                          
             Application 09/004,524                                                                                    
             Patent 5,483,421                                                                                          

                    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                                         
                    “intermediate scope” is irrelevant. . . . [T]he recapture rule is applied                          
                    on a limitation-by-limitation basis, and ... [North American                                       
                    Container’s] deletion of the “generally convex” limitation clearly                                 
                    broadened the “inner wall” limitation.                                                             
             Id.  Thus, the Federal Circuit in North American Container further refined                                
             Substep (3)(a) of Clement:  “broader in an aspect germane to a prior art rejection”                       
             means broader with respect to a specific limitation (1) added to overcome prior art                       
             in prosecution of the application which matured into the patent sought to be                              
             reissued and (2) eliminated in the reissue application claims.                                            




                                                        - 33 -                                                         

Page:  Previous  26  27  28  29  30  31  32  33  34  35  36  37  38  39  40  Next

Last modified: September 9, 2013