Appeal 2007-0040
Application 10/170,069
Patent 6,073,699
In Pannu, the Federal Circuit described the second step of the
recapture rule analysis as determining “whether the broader aspects of the
reissued claim related to surrendered subject matter.” 258 F.3d at 1371,
59 USPQ2d at 1600 (quoting Clement, 131 F.3d at 1468, 45 USPQ2d at
1164). With regard to the third step, the court stated: “Finally, the Court
must determine whether the reissued claims were materially narrowed in
other respects to avoid the recapture rule.” Id. (emphases added), citing for
authority Hester, 142 F.3d at 1482-83, 46 USPQ2d at 1649-50; Clement,
131 F.3d at 1470, 45 USPQ2d at 1165. As in North American Container,
the language “materially narrowed in other respects” relates for comparison
back to the earlier recited “broader aspects of the reissued claim” (i.e.,
surrendered subject matter). Again, modification of “materially narrowed”
with the phrase “in other respects” clarifies that reissue claims will avoid the
recapture rule if materially narrowed in respects other than the broader
aspects relating to surrendered subject matter.
Similarly, in Hester Indus., the Federal Circuit determined that
“surrendered subject matter - i.e., cooking other than solely with steam and
with at least two sources of steam – has crept into the reissue claims
[because] [t]he asserted reissue claims are unmistakably broader in these
respects.” 142 F.3d at 1482, 46 USPQ2d at 1649. Immediately after making
this determination, the court then stated: “Finally, because the recapture rule
may be avoided in some circumstances, we consider whether the reissue
claims were materially narrowed in other respects.” Id. (emphases added).
Yet again, the language “materially narrowed in other respects” relates for
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