Appeal 2006-1865
Application 09/660,433
Patent 5,802,641
We interpret Festo III to generally, perhaps effectively, limit the admissible
rebuttal evidence to the prosecution history record and extrinsic evidence related to
the knowledge of the hypothetical person of ordinary skill in the art at the time of
the amendment. Admitting evidence not available to the public, such as an
affidavit of an attorney giving mental impressions from the attorney who made the
amendment, would undermine the public notice function of the patent and its
prosecution history.
(12)
Materially Narrowed in Overlooked Aspects
When reissue claims are narrower than the patent claims with respect to
features other than the surrender generating feature, then the reissue claims may be
materially narrowed relative to the claims prosecuted and issued in the patent,
thereby avoiding the recapture rule.
The Federal Circuit in North American Container characterized the second
and third steps in applying the recapture rule as determining “whether the broader
aspects of the reissue claims relate to subject matter surrendered in the original
prosecution” and “whether the reissued claims were materially narrowed in other
respects, so that the claims may not have been enlarged, and hence avoid the
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