Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
guidance from the Federal Circuit regarding how the recapture rule may be
avoided when a reissue claim is narrower in an aspect germane to prior art
rejection, or materially narrowed in other respects, in my view we should not
try to draw conclusions from language in other recapture cases. In this
difficult and fact-specific area of the law, we cannot draw conclusions from
language in cases that fall within the facts of Clement 3(a) -- i.e., a limitation
added during prosecution, in response to a rejection, is omitted in its entirety
in the reissue claims -- and apply those conclusions to cases that fall within
the distinct factual situation of Clement 3(b).
With rejection of Eggert as binding authority, the majority limits the
material narrowing “in other respects” to avoid the recapture rule to
“overlooked” aspects of the invention as discussed in Hester Industries Inc.
v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998). The
majority further points out (part IV.A.(12) supra) that the reissue claims that
avoided recapture in Ball Corp. could be characterized as material narrowing
in “overlooked” aspects of the invention, as the reissue claims recited
structure that was not claimed during the original prosecution. The Federal
Circuit in Ball Corp., however, did not discuss the replacement limitation as
being an “overlooked” aspect of the invention. Moreover, the lower court
pointed out that the subject matter had never been claimed in the original
application as support for the views that the reissue claims were different in
scope (i.e., narrower) than the claims canceled from the original application
and narrower than the patent claims at least with respect to the added
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