Appeal 2007-1432
Application 09/141,186
Patent 5,549,673
determining if a patentee has met its burden under this third
rebuttal criterion.
We interpret Festo III to generally, perhaps effectively, limit the
admissible rebuttal evidence to the prosecution history record and extrinsic
evidence related to the knowledge of the hypothetical person of ordinary
skill in the art at the time of the amendment. Admitting evidence not
available to the public, such as an affidavit of an attorney giving mental
impressions from the attorney who made the amendment, would undermine
the public notice function of the patent and its prosecution history.
(12)
Materially Narrowed in Overlooked Aspects
When reissue claims are narrower than the patent claims with respect
to features other than the surrender generating feature, then the reissue
claims may be materially narrowed relative to the claims prosecuted and
issued in the patent, thereby avoiding the recapture rule.
The Federal Circuit in North American Container characterized the
second and third steps in applying the recapture rule as determining
“whether the broader aspects of the reissue claims relate to subject matter
surrendered in the original prosecution” and “whether the reissued claims
were materially narrowed in other respects, so that the claims may not have
been enlarged, and hence avoid the recapture rule.” 415 F.3d at 1349, 75
USQ2d at 1556 (emphases added), citing for authority Pannu, 258 F.3d at
1371, 59 USPQ2d at 1600. The language “materially narrowed in other
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