Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
1164). With regard to the third step, the court stated: “Finally, the Court
must determine whether the reissued claims were materially narrowed in
other respects to avoid the recapture rule.” Id. (emphases added), citing for
authority Hester, 142 F.3d at 1482-83, 46 USPQ2d at 1649-50; Clement,
131 F.3d at 1470, 45 USPQ2d at 1165. As in North American Container,
the language “materially narrowed in other respects” relates for comparison
back to the earlier recited “broader aspects of the reissued claim” (i.e.,
surrendered subject matter). Again, modification of “materially narrowed”
with the phrase “in other respects” clarifies that reissue claims will avoid the
recapture rule if materially narrowed in respects other than the broader
aspects relating to surrendered subject matter.
Similarly, in Hester Indus., the Federal Circuit determined that
“surrendered subject matter - i.e., cooking other than solely with steam and
with at least two sources of steam – has crept into the reissue claims
[because] [t]he asserted reissue claims are unmistakably broader in these
respects.” 142 F.3d at 1482, 46 USPQ2d at 1649. Immediately after making
this determination, the court then stated: “Finally, because the recapture rule
may be avoided in some circumstances, we consider whether the reissue
claims were materially narrowed in other respects.” Id. (emphases added).
Yet again, the language “materially narrowed in other respects” relates for
comparison back to the earlier recited language “[t]he asserted reissue
claims are unmistakably broader in these respects.” It follows that Hester
Indus. also makes clear that a reissue claim will avoid the recapture rule if
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