Appeal 2006-1865
Application 09/660,433
Patent 5,802,641
recapture rule.” 415 F.3d at 1349, 75 USQ2d at 1556 (emphases added), citing for
authority Pannu, 258 F.3d at 1371, 59 USPQ2d at 1600. The language “materially
narrowed in other respects” relates for comparison back to the earlier recited
“broader aspects of the reissued claims” (i.e., surrendered subject matter). Thus,
by using the phrase “in other respects” to modify “materially narrowed,” the court
makes clear that reissue claims will avoid the recapture rule if materially narrowed
in respects other than the broader aspects relating to surrendered subject matter.
This plain language in North American Container indicates that the recapture rule
is avoided if the added limitations are a materially narrowing in respects other than
the broader aspects relating to surrendered subject matter.
In Pannu, the Federal Circuit described the second step of the recapture rule
analysis as determining “whether the broader aspects of the reissued claim related
to surrendered subject matter.” 258 F.3d at 1371, 59 USPQ2d at 1600 (quoting
Clement, 131 F.3d at 1468, 45 USPQ2d at 1164). With regard to the third step, the
court stated: “Finally, the Court must determine whether the reissued claims were
materially narrowed in other respects to avoid the recapture rule.” Id. (emphases
added), citing for authority Hester, 142 F.3d at 1482-83, 46 USPQ2d at 1649-50;
Clement, 131 F.3d at 1470, 45 USPQ2d at 1165. As in North American Container,
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