Appeal 2007-0493
Application 10/289,967
Patent 6,144,380
claim10 in all aspects, the recapture rule bars the claim; (2) if it
is narrower in all aspects, the recapture rule does not apply, but
other rejections are possible; (3) if the reissue claim is broader
in some aspects, but narrower in others, then: (a) if the reissue
claim is as broad as or broader in an aspect germane to a prior
art rejection, but narrower in another aspect completely
unrelated to the rejection, the recapture rule bars the claim; (b)
if the reissue claim is narrower in an aspect germane to prior art
rejection, and broader in an aspect unrelated to the rejection, the
recapture rule does not bar the claim, but other rejections are
possible. Mentor is an example of (3)(a); Ball is an example of
(3)(b).
In re Clement at 1470, 45 USPQ2d at 1165 (footnote added).
Appellants’ position, as stated at page 10 of the Brief, is that the
second step (expressed in Pannu, supra) towards applying the recapture rule
fails because reissue independent claims 5, 27, 49, and 77 are broader than
originally issued independent claim 1 in a manner “not directly pertinent” to
the subject matter surrendered during prosecution. The subject matter
surrendered during prosecution, according to Appellants, is “the use of a
mark-up button to display or hide handwriting.” (Br. 10.)
10 The “canceled or amended claim” is the claim that was canceled or
amended. “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” (emphasis
added). In re Clement at 1469, 45 USPQ2d at 1164. In Clement, the Federal
Circuit compared the reissue claim with the corresponding application claim
as it stood before the amendments added during prosecution. See In re
Clement at 1470-71, 45 USPQ2d at 1165-66.
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