Appeal 2006-1865
Application 09/660,433
Patent 5,802,641
(14)
Public Notice
We believe that any recapture analysis must be bottomed principally on a
“public notice” analysis which can occur only after a record becomes “fixed.” In
the case of a patent, the “claims” and the “prosecution history” become fixed at the
time the patent is issued--not during “fluid” patent prosecution where claims and
arguments can change depending on the circumstances, e.g., prior art applied and
amendments to claims. It is from a fixed perspective that the public (not the
patentee) must make an analysis of what the patentee surrendered during
prosecution. Moreover, an Appellant (not the public) controls what amendments
and arguments are presented during prosecution. When an amendment or
argument is presented, it is the Appellant that should be in the best position to
analyze what subject matter (i.e., territory to use the Supreme Court’s language) is
being surrendered (or explain why the reissue claims are materially narrowed).
Our belief is supported by what appears to be dicta in MBO Laboratories,
Inc. v. Becton, Dickinson & Company, No. 2006-1062, slip. op. at 12-13 (Fed. Cir.
Jan. 24, 2007):
The recapture rule is a limitation on the ability of patentees to broaden
their patents after issuance. . . . . Section 251 is “remedial in nature,
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