Appeal 2007-0493
Application 10/289,967
Patent 6,144,380
BLANKENSHIP, Administrative Patent Judge, concurring.
I write separately only to discuss an alternative view of the recapture
rule as it applies to this case. I disagree with Appellants’ statement, at page
5 of the Reply Brief, that “[w]ith respect to broadening reissues and
‘recapture,’ there is no ambiguity regarding the law.” However, in this case,
even with the alternative view of the precedents that set out the law of
recapture, the recapture rule bars Appellants’ reissue claims.9
Application of the recapture rule is a three-step process. The
first step is to determine whether and in what aspect the reissue
claims are broader than the patent claims. The second step is to
determine whether the broader aspects of the reissued claim
related to surrendered subject matter. Finally, the court must
determine whether the reissued claims were materially
narrowed in other respects to avoid the recapture rule.
Pannu v. Storz Instruments, Inc., 258 Fl.3d 1366, 1371, 59 USPQ2d 1597,
1600 (Fed. Cir. 2001) (internal quotations and citations omitted).
“Deliberately canceling or amending a claim in an effort to overcome
a reference strongly suggests that the applicant admits that the scope of the
claim before the cancellation or amendment is unpatentable, but it is not
dispositive because other evidence in the prosecution history may indicate
the contrary.” In re Clement, 131 F.3d 1464, 1469, 45 USPQ2d 1161, 1164
(Fed. Cir. 1997) (citations omitted). Here, Appellants do not point to any
evidence in the prosecution history that may indicate the contrary.
9 Any differences that I may have with the majority opinion in its
interpretation of the recapture rule in no way relates to the new, independent
ground of rejection for lack of statutory “error” under § 251.
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