Appeal 2007-0040
Application 10/170,069
Patent 6,073,699
AFFIRMED
37 C.F.R. § 41.50(b)
BLANKENSHIP, Administrative Patent Judge, concurring.
I agree with my colleagues that Appellant has failed to show that
reissue claim 4 does not relate to surrendered subject matter as described in
the cases of our reviewing court, such as In re Clement, 131 F.3d 1464,
1469, 45 USPQ2d 1161, 1164 (Fed. Cir. 1997), and Kim v. ConAgra Foods,
Inc., 465 F.3d 1312, 80 USPQ2d 1495 (Fed. Cir. 2006). Further, I agree that
the reissue claim has not been materially narrowed in overlooked aspects of
the invention at least for the reason that, as the majority finds, every
limitation of reissue claim 4 is found in original application claim 11, which
was examined and rejected by the Examiner.
In Ex parte Eggert, 67 USPQ2d 1716 (Bd. Pat. App. & Int. 2003)
(precedential), an expanded panel of the Board determined that the reissue
claims had been narrowed in the same aspect (i.e., the shape of the retaining
member) in which they were broadened with regard to a patent claim, thus
avoiding recapture. In accordance with the holding of Eggert, there is no
recapture when the reissue claims retain, in broadened form, the limitation
added (or argued) to overcome a prior art rejection in the original
prosecution. See Manual of Patent Examining Procedure § 1412.02, p.
1400-23, under heading “(d) Reissue Claims Broader in Scope in Area
Directed to Amendment/Argument Made to Overcome Art Rejection in
Original Prosecution; but Reissue Claims Retain, in Broadened Form, the
Limitation(s) Argued/Added to Overcome Art Rejection in Original
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