Appeal 2006-1865
Application 09/660,433
Patent 5,802,641
claims (see clause (f) of patent claim 1). 131 F.3d at 1470, 1474, 45 USPQ2d at
1165, 1169. Therefore, the narrowing limitation of Clement, like Pannu, was not
overlooked during original prosecution and did not materially narrow the reissue
claim.
Finally, in Mentor, each of the limitations added to the reissue claims
were thoroughly analyzed and determined to not be materially narrowing because
the same or similar features were in the patent claims or the prior art. Mentor, 998
F.2d at 996, 27 USPQ2d at 1525-26. It follows that the reissue claims of Mentor,
like those of Pannu and Clement, failed to avoid the recapture rule because they
had been broadened to include surrendered subject matter but had not been
narrowed in any material respect.
In summary, the recapture rule is avoided if the reissue claim was
materially narrowed in other respects compared to its broadening surrendered
aspect. A reissue claim is materially narrowed and thus avoids the recapture rule
when limited to aspects of the invention:
(1) which had not been claimed and thus were overlooked during
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