Appeal 2006-1865
Application 09/660,433
Patent 5,802,641
avoid the recapture rule if materially narrowed in respects other than the broader
aspects relating to surrendered subject matter.
There is a reason the Federal Circuit has repeatedly assessed recapture rule
avoidance in terms of whether the reissue claims were materially narrowed in
respects other than the broader aspects relating to surrendered subject matter. The
reason involves the purpose served by permitting the recapture rule to be avoided
under certain circumstances. This purpose is described in Hester Indus. as follows:
[T]his principle [i.e., avoidance of the recapture rule], in appropriate
cases, may operate to overcome the recapture rule when the reissue
claims are materially narrower in other overlooked aspects of the
invention. The purpose of this exception to the recapture rule is to
allow the patentee to obtain through reissue a scope of protection to
which he is rightfully entitled for such overlooked aspects.
142 F.3d at 1482-83, 46 USPQ2d at 1649-50.
As explained in Hester Indus., the recapture rule is avoided when two
conditions are satisfied. First, an aspect of the invention must have been
overlooked (e.g., not claimed) during patent prosecution. Second, the reissue
claim must have been materially narrowed with respect to this overlooked aspect
of the invention. Because recapture rule avoidance requires the reissue claim to be
materially narrowed in an overlooked aspect of the invention, this material
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