Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
the prior art and that the particular range . . . was indefinite in
that it was unclear if it was measured solely in ratio to flour.”
We agree with the district court. We therefore affirm the
district court’s denial of ConAgra’s motion for JMOL of
invalidity based on the recapture rule.
Kim at 1324, 80 USPQ2d at 1503 (citations to Joint Appendix omitted).
Kim thus demonstrates that the step of determining whether a reissue
claim is materially narrowed in other respects to avoid the recapture rule can
be obviated. An applicant for reissue may show that the broader aspects of
the reissue claim does not relate to surrendered subject matter, before
reaching the question of material narrowing. The evidence available to the
“objective observer” includes the prior art that was applied against the claim.
That the applied prior art did not require the precise limitation added in
response to a rejection can be a factor in showing that recapture does not
apply, 14 when considered with other indicia in the prosecution history
tending to show that subject matter was not surrendered.
Kim also rebuts the majority’s contention, part IV.A.(6) supra, that the
subject matter that is surrendered includes, on a limitation-by-limitation
basis, the territory falling between the scope of the application claim that
was canceled or amended and the patent claim that ultimately issued.
14 “[O]ne might err without deceptive intention in adding a particular
limitation where a less specific limitation regarding the same feature, or an
added limitation relative to another element, would have been sufficient to
render the claims patentable over the prior art.” In re Richman, 409 F.2d
269, 276, 161 USPQ 359, 363 (CCPA 1969).
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