Appeal 2007-1432
Application 09/141,186
Patent 5,549,673
through reissue a scope of protection to which he is rightfully
entitled for such overlooked aspects.
142 F.3d at 1482-83, 46 USPQ2d at 1649-50.
As explained in Hester Indus., the recapture rule is avoided when two
conditions are satisfied. First, an aspect of the invention must have been
overlooked (e.g., not claimed) during patent prosecution. Second, the
reissue claim must have been materially narrowed with respect to this
overlooked aspect of the invention. Because recapture rule avoidance
requires the reissue claim to be materially narrowed in an overlooked aspect
of the invention, this material narrowing must be in respects other than the
broader aspects relating to surrendered subject matter. Stated differently, a
material narrowing in an overlooked aspect cannot possibly relate to
surrendered subject matter since this subject matter, having been claimed
and then surrendered during original prosecution, could not have been
overlooked.
In Pannu, the Federal Circuit stated that “[t]he narrowing aspect of the
claim on reissue … was not related to the shape of the haptics, but rather the
positioning and dimensions of the snag resistant means [, and] [t]herefore,
the reissued claims were not narrowed in any material respect compared to
their broadening.” 258 F.3d at 1372, 59 USPQ2d at 1600-01. If read in a
vacuum, this statement might appear to support a contrary result to our
analysis. However, the court’s opinion in general and this statement in
particular must be read, not in a vacuum but, in light of the facts of the case
on appeal.
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