Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
to a feature not found in the originally prosecuted claims and were
determined by the Examiner to distinguish over the prior art. See Ball
Corporation v. The United States, 219 USPQ 73, 79 (Cl. Ct. 1982). (“[T]he
new reissue claims recite structure never before recited in any claim
presented during the prosecution of the original case. These recitations
appear, on their face, to be substantial.”)
Finally, in Mentor, each of the limitations added to the reissue claims
were thoroughly analyzed and determined to not be materially narrowing
because the same or similar features were in the patent claims or the prior
art. Mentor, 998 F.2d at 996, 27 USPQ2d at 1525-26. It follows that the
reissue claims of Mentor, like those of Pannu and Clement, failed to avoid
the recapture rule because they had been broadened to include surrendered
subject matter but had not been narrowed in any material respect.
In summary, the recapture rule is avoided if the reissue claim was
materially narrowed in other respects compared to its broadening
surrendered aspect. A reissue claim is materially narrowed and thus avoids
the recapture rule when limited to aspects of the invention:
(1) which had not been claimed and thus were overlooked during
prosecution of the original patent application;6 and
6 For a patent containing only apparatus claims, it might be argued that
reissue method claims cannot involve surrendered subject matter where no
method claim was ever presented during prosecution of the patent.
However, surrender is not avoided merely by categorizing a claimed
invention as a method rather than an apparatus. It is the scope of a claimed
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