Appeals 2006-2874 and 2006-2747
Applications 08/544,212 and 09/287,664
Patent 5,401,305
1 recapture rule thus serves the same policy as does
2 the doctrine of prosecution history estoppel: both
3 operate, albeit in different ways, to prevent a
4 patentee from encroaching back into territory that
5 had previously been committed to the public.
6 (citations omitted.)
7 As a matter of law, we conclude that a recapture rejection may be based on a
8 lack of enablement rejection made during prosecution of the application into
9 the patent sought to be reissued.
10 On the merits of the recapture rejection, it seems manifest that the
11 Examiner’s concern in entering the lack of enablement rejection in the
12 original application was the breadth of the silicon compounds. There was no
13 “metal oxide” limitation since the metal was limited to “tin”. Accordingly,
14 during the original prosecution no enablement issue arose with respect to
15 “metal” oxide. The error which occurred was Appellants’ failure to claim
16 “metal oxide” in place of “tin oxide”. We see no reason why Appellants
17 should not be able to do so. We agree with Appellants that the broadening
18 aspect of the claims in the reissue application was not germane to any lack
19 of enablement rejection made by the Examiner during the original
20 prosecution. Moreover, the public reading the prosecution history could not
21 reasonably have believed "metal oxide" had been surrendered because it was
22 never in issue.
23
24 Claims 29 and 31-32 (Appeal 2006-2684)
25 Claim 29 limits the “metal oxide” to a Markush group of metal oxides
26 and is narrower than claim 28. Claim 31 is similar in scope to claim 28.
27 Claim 32 is similar in scope to claim 29, it also limiting the metal oxide to a
28 Markush group of metal oxides.
10
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