Appeal 2006-1865
Application 09/660,433
Patent 5,802,641
(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 Appellant admits that
the scope of the claim before cancellation or amendment is unpatentable. 131 F.3d
at 1469, 45 USPQ2d at 1164.
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