Appeal 2007-1432
Application 09/141,186
Patent 5,549,673
In summary, the recapture rule is avoided if the reissue claim was
materially narrowed in other respects compared to its broadening
surrendered aspect. A reissue claim is materially narrowed and thus avoids
the recapture rule when limited to aspects of the invention:
(1) which had not been claimed and thus were overlooked during
prosecution of the original patent application;7 and
(2) which patentably distinguish over the prior art.
(13)
Non-relevance of “intervening rights”
We have not overlooked a possibility that an argument might be made
that the so-called intervening rights provision relating to reissues makes
jurisprudence on the doctrine of equivalents presumption inapplicable to
reissue recapture rules. Our answer as to the argument is similar to the
answer given by the Federal Circuit in Hester with respect to whether the
doctrine of equivalents surrender principles have any applicability to reissue
surrender principles. Hester squarely held that they do. Moreover, mixing
“intervening rights” with “surrender” is like mixing apples with oranges or
7 For a patent containing only apparatus claims, it might be argued that
reissue method claims cannot involve surrendered subject matter where no
method claim was ever presented during prosecution of the patent.
However, surrender is not avoided merely by categorizing a claimed
invention as a method rather than an apparatus. It is the scope of a claimed
invention, not its categorization, which determines whether surrendered
subject matter has crept into a reissue claim.
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