Appeal 2006-1865
Application 09/660,433
Patent 5,802,641
North American Container involved a reissue patent, which had been held
invalid by the U.S. District Court for the Northern District of Texas. The district
court bottomed its invalidity holding based on a violation of the recapture rule.
During prosecution of an application for patent, an examiner rejected the claims
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.
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