Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
Moreover, the Federal Circuit has reviewed four reissue recapture
cases since Festo,11 and none have cited Festo or otherwise indicated that
recent developments in the law of the doctrine of equivalents have changed
any analysis with respect to reissue recapture. Kim v. ConAgra Foods, Inc.,
465 F.3d 1312, 80 USPQ2d 1495 (Fed. Cir. 2006), provides guidance for the
determination of “what subject matter is surrendered” in the context of
broadening reissue.
In Kim, the applicant Kim filed a patent application for a composition
and process for controlling the oxidation rate of ascorbic acid in
breadmaking. Claims 1 through 5 of the application were directed to a
composition including an unspecified amount of ascorbic acid and 0.03-0.2
parts organic acid by weight of flour in the dough. The examiner rejected
claims as obvious over Tanaka (U.S. Patent 4,296,133) and two other
references. Kim abandoned the original application and filed a continuation-
in-part application, with claim 1 including, inter alia, a food acid limitation
of 0.02-0.15 parts per 100 parts of flour. Kim at 1320-21, 80 USPQ2d at
1500.
The examiner rejected the continuation-in-part claims as obvious over
Tanaka and other references. Following a telephone conference with Kim,
11 North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d
1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Kim v. ConAgra Foods, Inc., 465
F.3d 1312, 80 USPQ2d 1495 (Fed. Cir. 2006); Medtronic, Inc. v. Guidant
Corp., 465 F.3d 1360, 80 USPQ2d 1558 (Fed. Cir. 2006); MBO
Laboratories, Inc. v. Becton, Dickinson & Company, 474 F.3d 1323, 81
USPQ2d 1661 (Fed. Cir. 2007).
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