Appeal 2007-1432
Application 09/141,186
Patent 5,549,673
Similarly, in Hester Indus., the Federal Circuit determined that
“surrendered subject matter - i.e., cooking other than solely with steam and
with at least two sources of steam – has crept into the reissue claims
[because] [t]he asserted reissue claims are unmistakably broader in these
respects.” 142 F.3d at 1482, 46 USPQ2d at 1649. Immediately after making
this determination, the court then stated: “Finally, because the recapture rule
may be avoided in some circumstances, we consider whether the reissue
claims were materially narrowed in other respects.” Id. (emphases added).
Yet again, the language “materially narrowed in other respects” relates for
comparison back to the earlier recited language “[t]he asserted reissue
claims are unmistakably broader in these respects.” It follows that Hester
Indus. also makes clear that a reissue claim will avoid the recapture rule if
materially narrowed in respects other than the broader aspects relating to
surrendered subject matter.
There is a reason the Federal Circuit has repeatedly assessed recapture
rule avoidance in terms of whether the reissue claims were materially
narrowed in respects other than the broader aspects relating to surrendered
subject matter. The reason involves the purpose served by permitting the
recapture rule to be avoided under certain circumstances. This purpose is
described in Hester Indus. as follows:
[T]his principle [i.e., avoidance of the recapture rule], in
appropriate cases, may operate to overcome the recapture rule
when the reissue claims are materially narrower in other
overlooked aspects of the invention. The purpose of this
exception to the recapture rule is to allow the patentee to obtain
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