Appeal 2007-0040
Application 10/170,069
Patent 6,073,699
(12)
Materially Narrowed in Overlooked Aspects
When reissue claims are narrower than the patent claims with respect
to features other than the surrender generating feature, then the reissue
claims may be materially narrowed relative to the claims prosecuted and
issued in the patent, thereby avoiding the recapture rule.
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 indicates that the
recapture rule is avoided if the added limitations are a materially narrowing
in respects other than the broader aspects relating to surrendered subject
matter.
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