Appeal 2007-0040
Application 10/170,069
Patent 6,073,699
in which (1) the language “inner wall portions are generally convex” was
eliminated, but (2) the language “wherein the diameter of said re-entrant
portion is in the range of 5% to 30% of the overall diameter of said side
wall” was added. Thus, the claim sought be reissued was broader in some
aspects and narrower in other aspects.
The Federal Circuit, applying the Clement three-step test, held that the
reissue claims were broader in scope than the originally-issued claims in that
they no longer require the “inner walls” to be “generally convex.” The
Federal Circuit further found that the broadened aspect (i.e., the broadened
limitation) “relate[d] to subject matter that was surrendered during
prosecution of the original-filed claims.” 415 F.3d at 1350, 75 USPQ2d at
1557. The Federal Circuit observed “the reissue claims were not narrowed
with respect to the ‘inner wall’ limitation, thus avoiding the recapture rule.”
The Federal Circuit stated:
[t]hat the reissue claims, looked at as a whole, may be of
“intermediate scope” is irrelevant. . . . [T]he recapture rule is
applied on a limitation-by-limitation basis, and ... [North
American Container’s] deletion of the “generally convex”
limitation clearly broadened the “inner wall” limitation.
Id. Thus, the Federal Circuit in North American Container further refined
Substep (3)(a) of Clement: “broader in an aspect germane to a prior art
rejection” means broader with respect to a specific limitation (1) added to
overcome prior art in prosecution of the application which matured into the
patent sought to be reissued and (2) eliminated in the reissue application
claims.
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