Appeal 2007-1432
Application 09/141,186
Patent 5,549,673
claims (“at least 59 ISO in the final pulp”; see clause (e) of reissue claim 49)
also was recited in the patent claims (see clause (f) of patent claim 1). 131
F.3d at 1470, 1474, 45 USPQ2d at 1165, 1169. Therefore, the narrowing
limitation of Clement, like Pannu, was not overlooked during original
prosecution and did not materially narrow the reissue claim.
Additionally, in setting forth the test for recapture Clement states in
part that “if the reissue claim is narrower in an aspect germane to prior art
rejection, and broader in an aspect unrelated to the rejection, the recapture
rule does not bar the claim” and specifically states that “Ball is an example
of (3)(b).” 131 F.3d at 1470, 45 USPQ2d at 1165. The claims before the
court in Ball were determined by the trial judge to be materially narrower as
to a feature not found in the originally prosecuted claims and were
determined by the Examiner to distinguish over the prior art. See Ball
Corporation v. The United States, 219 USPQ 73, 79 (Cl. Ct. 1982). (“[T]he
new reissue claims recite structure never before recited in any claim
presented during the prosecution of the original case. These recitations
appear, on their face, to be substantial.”)
Finally, in Mentor, each of the limitations added to the reissue claims
were thoroughly analyzed and determined to not be materially narrowing
because the same or similar features were in the patent claims or the prior
art. Mentor, 998 F.2d at 996, 27 USPQ2d at 1525-26. It follows that the
reissue claims of Mentor, like those of Pannu and Clement, failed to avoid
the recapture rule because they had been broadened to include surrendered
subject matter but had not been narrowed in any material respect.
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