Appeal 2007-0040
Application 10/170,069
Patent 6,073,699
comparison back to the earlier recited language “[t]he asserted reissue
claims are unmistakably broader in these respects.” It follows that Hester
Indus. also makes clear that a reissue claim will avoid the recapture rule if
materially narrowed in respects other than the broader aspects relating to
surrendered subject matter.
There is a reason the Federal Circuit has repeatedly assessed recapture
rule avoidance in terms of whether the reissue claims were materially
narrowed in respects other than the broader aspects relating to surrendered
subject matter. The reason involves the purpose served by permitting the
recapture rule to be avoided under certain circumstances. This purpose is
described in Hester Indus. as follows:
[T]his principle [i.e., avoidance of the recapture rule], in
appropriate cases, may operate to overcome the recapture rule
when the reissue claims are materially narrower in other
overlooked aspects of the invention. The purpose of this
exception to the recapture rule is to allow the patentee to obtain
through reissue a scope of protection to which he is rightfully
entitled for such overlooked aspects.
142 F.3d at 1482-83, 46 USPQ2d at 1649-50.
As explained in Hester Indus., the recapture rule is avoided when two
conditions are satisfied. First, an aspect of the invention must have been
overlooked (e.g., not claimed) during patent prosecution. Second, the
reissue claim must have been materially narrowed with respect to this
overlooked aspect of the invention. Because recapture rule avoidance
requires the reissue claim to be materially narrowed in an overlooked aspect
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