Appeal 2007-1432
Application 09/141,186
Patent 5,549,673
respects” relates for comparison back to the earlier recited “broader aspects
of the reissued claims” (i.e., surrendered subject matter). Thus, by using the
phrase “in other respects” to modify “materially narrowed,” the court makes
clear that reissue claims will avoid the recapture rule if materially narrowed
in respects other than the broader aspects relating to surrendered subject
matter. This plain language in North American Container indicates that the
recapture rule is avoided if the added limitations are a materially narrowing
in respects other than the broader aspects relating to surrendered subject
matter.
In Pannu, the Federal Circuit described the second step of the
recapture rule analysis as determining “whether the broader aspects of the
reissued claim related to surrendered subject matter.” 258 F.3d at 1371,
59 USPQ2d at 1600 (quoting Clement, 131 F.3d at 1468, 45 USPQ2d at
1164). With regard to the third step, the court stated: “Finally, the Court
must determine whether the reissued claims were materially narrowed in
other respects to avoid the recapture rule.” Id. (emphases added), citing for
authority Hester, 142 F.3d at 1482-83, 46 USPQ2d at 1649-50; Clement,
131 F.3d at 1470, 45 USPQ2d at 1165. As in North American Container,
the language “materially narrowed in other respects” relates for comparison
back to the earlier recited “broader aspects of the reissued claim” (i.e.,
surrendered subject matter). Again, modification of “materially narrowed”
with the phrase “in other respects” clarifies that reissue claims will avoid the
recapture rule if materially narrowed in respects other than the broader
aspects relating to surrendered subject matter.
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