Appeal 2007-1432
Application 09/141,186
Patent 5,549,673
element from a patent claim is broader as to that limitation’s or element’s
aspect. 131 F.3d at 1468, 45 USPQ2d at 1164.
Step 2 involves a determination of whether the broader aspects of the
reissue application claims relate to surrendered subject matter. 131 F.3d at
1468-69, 45 USPQ2d at 1164. In this respect, review of arguments and/or
amendments during the prosecution history of the application, which
matured into the patent sought to be reissued, is appropriate. In reviewing
the prosecution history, the Federal Circuit observed that “[d]eliberately
canceling or amending a claim in an effort to overcome a [prior art]
reference strongly suggests that the Applicant admits that the scope of the
claim before cancellation or amendment is unpatentable.” 131 F.3d at 1469,
45 USPQ2d at 1164.
Step 3 is applied when the broadening relates to surrendered subject
matter and involves a determination whether the surrendered subject matter
has crept into the reissue application claim. Id. The following principles
were articulated in Clement, 131 F.3d at 1469-70, 45 USPQ2d at 1165:
Substep (1): if the reissue claim is as broad as or broader
than the canceled or amended claim in all aspects, the recapture
rule bars the claim;
Substep (2): if it is narrower in all aspects, the recapture
rules does not apply, but other rejections are possible;
Substep (3): if the reissue claim is broader in some
aspects, but narrower in others, then:
(a) if the reissue claim is as broad as or broader
in an aspect germane to a prior art rejection, but narrower
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