Appeal 2007-0040
Application 10/170,069
Patent 6,073,699
in another aspect completely unrelated to the rejection,
the recapture rule bars the claim;
(b) if the reissue claim is narrower in an aspect
germane to [a] prior art rejection, and broader in an
aspect unrelated to the rejection, the recapture rule does
not bar the claim, but other rejections are possible.
(4)
North American Container
In North American Container, Inc. v. Plastipak Packaging, Inc., 415
F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005), the Federal Circuit had
occasion to further address Substep (3)(a) of Clement.
North American Container involved a reissue patent, which had been
held invalid by the U.S. District Court for the Northern District of Texas.
The district court bottomed its invalidity holding based on a violation of the
recapture rule. During prosecution of an application for patent, an Examiner
rejected the claims over a combination of two prior art references:
Dechenne and Jakobsen. To overcome the rejection, North American
Container limited its application claims by specifying that a shape of “inner
walls” of a base of a container was “generally convex.” North American
Container convinced the Examiner that the shape of the base, as amended,
defined over “both the Dechenne patent, wherein the corresponding wall
portions 3 are slightly concave ... and the Jakobsen patent, wherein the entire
reentrant portion is clearly concave in its entirety.” 415 F.3d at 1340, 75
USPQ2d at 1549. After a patent issued containing the amended claims,
North American Container filed a reissue application seeking reissue claims
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