Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
BLANKENSHIP, Administrative Patent Judge, concurring-in-part and
dissenting-in-part.
Because under our precedents claims 10-43, 46-55, 58-66, 97-104,
and 106-108 have been materially narrowed in other respects to avoid
recapture under 35 U.S.C. § 251, I respectfully dissent from the majority’s
decision to sustain the rejection of those claims.
How may a reissue claim be materially narrowed
“in other respects” to avoid the recapture rule?
Application of the recapture rule is a three-step process. The
first step is to determine whether and in what aspect the reissue
claims are broader than the patent claims. The second step is to
determine whether the broader aspects of the reissued claim
related to surrendered subject matter. Finally, the court must
determine whether the reissued claims were materially
narrowed in other respects to avoid the recapture rule.
Pannu v. Storz Instruments, Inc., 258 Fl.3d 1366, 1371, 59 USPQ2d 1597,
1600 (Fed. Cir. 2001) (internal quotations and citations omitted).
The inquiry into if a reissue claim has been materially narrowed “in
other respects” to avoid the recapture rule may begin with consideration of
whether the subject matter of the claims that were canceled or amended in
the original application has been surrendered. “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
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