Appeal 2007-0493
Application 10/289,967
Patent 6,144,380
Appellants’ argument that the reissue claims avoid recapture is based
on the postulate, “reissue claims that are broader than the original patent
claims in a manner not directly pertinent to the subject matter surrendered
during prosecution are permissible.” (Br. 7.) Appellants cite, as the source
of the theory, “Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 998, 27
U.S.P.Q.2d (BNA) 1521, 1524 (Fed. Cir. 1993) (emphasis added).” (Id.)
Mentor, however, does not appear on page 998 of the cited Federal Reporter.
Nor does the case contain any statement that supports Appellants’
proposition, on page 1524 of volume 27 of USPQ2d, or elsewhere. “If a
reissue claim is broader in a way that does not attempt to reclaim what was
surrendered earlier, the recapture rule may not apply.” Mentor Corp. at
996, 27 USPQ2d at 1525 (emphasis added).
In any event, Appellants’ Brief at pages 8 through 10 demonstrates the
subject matter that was surrendered when amending original application
claim 19 in response to a prior art rejection. The surrendered subject matter
was at least that of claim 19 before entry of the preliminary amendment on
February 19, 1997.11 The broader aspects of the reissue claims relate to
surrendered subject matter at least for the reason that the reissue claims do
not contain all the limitations of original application claim 19 before the
amendment of February 19, 1997. That reissue claims may be broader in a
manner “not directly pertinent” to the subject matter surrendered during
prosecution is a fact addressed in the three-step inquiry identified in
11 Appellants’ Brief (at 9) indicates the date of amendment as January 9,
1997.
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