Appeal 2006-2744
Application 09/664,794
Patent 5,584,962
Principles of Law
Under the recapture rule, a patentee or reissue applicant is precluded
from regaining the subject matter that had been surrendered in an effort to
obtain allowance of the original claims. North American Container, Inc. v.
Plastipak Packaging, Inc., 415 F.3d 1335, 1349, 75 USPQ2d 1545, 1556
(Fed. Cir. 2005). As explained in North American Container:
We apply the recapture rule as a three-step process: (1) first,
we determine whether, and in what respect, the reissue claims
are broader in scope than the original patent claims; (2) next,
we determine whether the broader aspects of the reissue claims
relate to subject matter surrendered in the original prosecution;
and (3) finally, we determine whether the reissue claims were
materially narrowed in other respects, so that the claims may
not have been enlarged, and hence avoid the recapture rule.
Id. Accord, Pannu v. Storz Instruments, Inc., 258 F.3d 1366, 1371,
59 USPQ2d 1597, 1600 (Fed. Cir. 2001); Hester Indus. v. Stein, Inc.,
142 F.3d 1472, 1482-83, 46 USP2d 1641, 1649-50 (Fed. Cir. 1998); In re
Clement, 131 F.3d 1464, 1468, 45 USPQ2d 1161, 1164-65 (Fed. Cir. 1997).
Analysis
In applying the first step of the analytical process for the recapture
rule, we determine that the reissue claims on appeal are broader in scope
than the patent claims in that the reissue claims contain none of the pre-
tensioning means limitations of the patent claims. Indeed, as noted at
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