Appeal 2006-1865
Application 09/660,433
Patent 5,802,641
Step 3 is applied when the broadening relates to surrendered subject matter
and involves a determination whether the surrendered subject matter has crept into
the reissue application claim. Id. The following principles were articulated in
Clement, 131 F.3d at 1470, 45 USPQ2d at 1165:
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.
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