Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
the examiner allowed all the claims after amending the application to change
the method claims to composition claims and changing the transition phrase
from “comprising” to “consisting essentially of.” The examiner allowed the
claims as amended, noting that none of the prior art of record taught or
suggested, inter alia, “a food acid and a phosphate in a specific amount.” Id.
at 1321, 80 USPQ2d at 1500.
In applying for reissue of the patent, Kim sought to amend the original
patent by, inter alia, changing the food acid range from 0.02-0.15 parts per
100 parts of flour to 0.015-0.2 parts per 100 parts of flour. Id. at 1321, 80
USPQ2d at 1501. In the Federal Circuit’s review of a district court’s
judgment that the reissued claims were not invalid, Kim conceded that the
reissue claims were not narrower in any other material aspect.12 The only
recapture issue on review was whether the broader aspects of the reissued
claims related to “surrendered” subject matter. Id. at 1322, 80 USPQ2d at
1501.13
The Federal Circuit noted that in determining whether “surrender” of
subject matter has occurred, the proper inquiry is whether an objective
12 To the extent that the broadened range in the reissue might operate as a
“substitute” for the narrower range added during prosecution, the position
was not argued or addressed at the Federal Circuit.
13 The Federal Circuit also reaffirmed the rule that the challenger of a
reissued patent must establish surrender of recaptured subject matter by clear
and convincing evidence. See id. Cf. Festo Corp. v. Shoketsu Kinzoku
Kogyo Kabushiki Co., Ltd., 344 F.3d 1359, 1366-70, 68 USPQ2d 1321,
1325-28 (Fed. Cir. 2003) (burden of rebutting Festo presumption lies with
the patentee).
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