Appeal 2006-1865
Application 09/660,433
Patent 5,802,641
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.
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