Ex Parte Hollingsworth - Page 17



                Appeal 2007-0040                                                                             
                Application 10/170,069                                                                       
                Patent 6,073,699                                                                             

                element from a patent claim is broader as to that limitation’s or element’s                  
                aspect.  131 F.3d at 1468, 45 USPQ2d at 1164.                                                
                      Step 2 involves a determination of whether the broader aspects of the                  
                reissue application claims relate to surrendered subject matter.  131 F.3d at                
                1468-69, 45 USPQ2d at 1164.  In this respect, review of arguments and/or                     
                amendments during the prosecution history of the application, which                          
                matured into the patent sought to be reissued, is appropriate.  In reviewing                 
                the prosecution history, the Federal Circuit observed that “[d]eliberately                   
                canceling or amending a claim in an effort to overcome a [prior art]                         
                reference strongly suggests that the Appellant admits that the scope of the                  
                claim before cancellation or amendment is unpatentable.  131 F.3d at 1469,                   
                45 USPQ2d at 1164.                                                                           
                      Step 3 is applied when the broadening relates to surrendered subject                   
                matter and involves a determination whether the surrendered subject matter                   
                has crept into the reissue application claim.  Id.  The following principles                 
                were articulated in Clement, 131 F.3d at 1470, 45 USPQ2d at 1165:                            
                                   Substep (1):  if the reissue claim is as broad as or broader              
                            than the canceled or amended claim in all aspects, the recapture                 
                            rule bars the claim;                                                             
                                   Substep (2): if it is narrower in all aspects, the recapture              
                            rules does not apply, but other rejections are possible;                         
                                   Substep (3):  if the reissue claim is broader in some                     
                            aspects, but narrower in others, then:                                           
                                         (a) if the reissue claim is as broad as or broader                  
                                   in an aspect germane to a prior art rejection, but narrower               

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