Appeal 2007-0493
Application 10/289,967
Patent 6,144,380
“Once we determine that an applicant has surrendered the subject
matter of the canceled or amended claim, we then determine whether the
surrendered subject matter has crept into the reissue claim.” In re Clement
at 1469, 45 USPQ2d at 1164.
When a reissue claim is broader than a canceled or amended claim in
some aspects, but narrower in others, Clement instructs us in a way to
determine whether the surrendered subject matter has crept into the reissue
claim. The Federal Circuit in Clement referred to two earlier cases as
examples of how the recapture rule relates to broad and narrow aspects of
reissue claims as compared to claims in the original application.
In Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 27 USPQ2d 1521
(Fed. Cir. 1993), the issued claim was directed to a condom catheter, reciting
an adhesive means that was transferred from an outer to an inner surface
without turning the condom inside-out. In making amendments to the claim,
the applicant argued that none of the applied references showed the transfer
of adhesive from the outer surface to the inner surface as the sheath is rolled
up and then unrolled. The reissue claim eliminated the limitation that
adhesive was transferred from the outer to the inner layer, making the
reissue claim broader than the canceled claim in this aspect. The reissue
claim was also narrower than the canceled claim because it recited that the
catheter included a thin, flexible cylindrical material rolled outwardly upon
itself to form a single roll. Although the “flexible” and “single roll”
limitations made the reissue claim narrower than both the canceled and
issued claims, the reissue claim did not escape the recapture rule because the
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