Appeal 2006-2744
Application 09/664,794
Patent 5,584,962
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 authorities cited by the Examiner do not support his
belief that a reissue claim avoids the recapture rule only if its materially
narrowing aspect is related to its broadening surrendered aspect. Indeed, the
Examiner's view is not compatible with well established legal precedent as
discussed above. Consistent with this precedent including the Examiner's
cited authorities, 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 which were
overlooked during prosecution of the original patent application and which
patentably distinguish over the prior art.
Conclusions of Law
Based on the record of this appeal, we hold that the reissue claims on
appeal are broader than the patent claims in aspects relating to subject matter
surrendered during original prosecution but that the recapture rule
nevertheless is avoided because the reissue claims are materially narrowed
in other respects.
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