Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
observer viewing the prosecution history would conclude that the purpose of
the patentee’s amendment or argument was to overcome prior art and secure
the patent. Id. at 1323, 80 USPQ2d 1502. If the objective public observer
can discern a surrender of subject matter during the prosecution of an
original patent in order to overcome prior art and obtain the patent, then the
recapture rule should prevent the reissuing of that patent claim to claim the
surrendered subject matter. Id.
In the appeal to the Federal Circuit, the challenger ConAgra
contended, inter alia, that during prosecution of the original patent Kim
surrendered a lower limit for the food acid range when she changed the
range from 0.03-0.2 parts by weight of flour in the dough in her original
application to 0.02-0.15 parts per 100 parts of flour in the continuation-in-
part application. ConAgra suggested that Kim narrowed the food acid range
in order to distinguish the claim from the Tanaka reference. Id. at 1325, 80
USPQ2d at 1502-03.
However, this assertion is belied by the prosecution history. As
the district court explained, “the range for the food acids used in
the pertinent prior art (Tanaka) had been [0].0005 to [0].006.
Plaintiff’s lower end choice of [0].015 [in the reissue
application] or 0.02 [in the original application] are both a
significant difference from [0].006. It can not be inferred that
plaintiff’s choice of [0].020 instead of [0].015 was because
plaintiff was surrendering the difference between the two out of
fear [0].015 would be found to be obvious while [0].020 would
not.” Further, “[t]he Patent Examiner did not indicate that [the
original application's] range [of 0.03-0.2] was obvious in light
of the prior art. Instead, the Patent Examiner indicated that the
use of food acid and ascorbic acid in general was disclosed by
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