Appeal 2006-1865
Application 09/660,433
Patent 5,802,641
the language “materially narrowed in other respects” relates for comparison back
to the earlier recited “broader aspects of the reissued claim” (i.e., surrendered
subject matter). Again, modification of “materially narrowed” with the phrase “in
other respects” clarifies that reissue claims will avoid the recapture rule if
materially narrowed in respects other than the broader aspects relating to
surrendered subject matter.
Similarly, in Hester Indus., the Federal Circuit determined that
“surrendered subject matter - i.e., cooking other than solely with steam and with at
least two sources of steam – has crept into the reissue claims [because] [t]he
asserted reissue claims are unmistakably broader in these respects.” 142 F.3d at
1482, 46 USPQ2d at 1649. Immediately after making this determination, the court
then stated: “Finally, because the recapture rule may be avoided in some
circumstances, we consider whether the reissue claims were materially narrowed in
other respects.” Id. (emphases added). Yet again, the language “materially
narrowed in other respects” relates for comparison back to the earlier recited
language “[t]he asserted reissue claims are unmistakably broader in these
respects.” It follows that Hester Indus. also makes clear that a reissue claim will
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