Appeal 2006-2744
Application 09/664,794
Patent 5,584,962
clearly revealed by express language in a number of legal precedents
including the Pannu decision cited by the Examiner.
For example, we previously explained that the Federal Circuit in
North American Container characterized the second and third steps in
applying the recapture rule as determining "whether the broader aspects of
the reissue claims relate to subject matter surrendered in the original
prosecution" and "whether the reissued claims were materially narrowed in
other respects, so that the claims may not have been enlarged, and hence
avoid the recapture rule." 415 F.3d at 1349, 75 USQ2d at 1556 (emphases
added), citing for authority Pannu, 258 F.3d at 1371, 59 USPQ2d at 1600.
The language "materially narrowed in other respects" relates for comparison
back to the earlier recited "broader aspects of the reissued claims" (i.e.,
surrendered subject matter). Thus, by using the phrase "in other respects" to
modify "materially narrowed," the court makes clear that reissue claims will
avoid the recapture rule if materially narrowed in respects other than the
broader aspects relating to surrendered subject matter. This plain language
in North American Container directly contradicts the Examiner's belief that
the recapture rule is not avoided if the added limitations are a materially
narrowing in respects other than the broader aspects relating to surrendered
subject matter.
In Pannu, the Federal Circuit described the second step of the
recapture rule analysis as determining "whether the broader aspects of the
reissued claim related to surrendered subject matter." 258 F.3d at 1371,
59 USPQ2d at 1600 (quoting Clement, 131 F.3d at 1468, 45 USPQ2d at
1164). With regard to the third step, the court stated: "Finally, the Court
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