Ex Parte Beale

Board of Patent Appeals and Interferences

Aug 29, 2007

09141186 (B.P.A.I. Aug. 29, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte BRADFORD W. BEALE
_______________

Appeal 2007-1432
Application 09/141,1861
Patent 5,549,673
Technology Center 3700
_______________

Decided: August 29, 2007
_______________

Before FRED E. MCKELVEY, HOWARD B. BLANKENSHIP,
and ALLEN R. MACDONALD, Administrative Patent Judges.

MACDONALD, Administrative Patent Judge.

DECISION ON APPEAL

AFFIRMED-IN-PART
1 Application filed August 27, 1998, seeking to reissue U.S. Patent
5,549,673 issued August 27, 1996, based on Application 08/118,097, filed
September 8, 1993, as a continuation of Application 07/511,454, filed
April 20, 1990, now abandoned. The real party in interest is Gyrus Group,
plc. (Br. 2).
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I. STATEMENT OF CASE
1. Appellant appeals under 35 U.S.C. § 134 from a Final Rejection
of reissue claims 1-3 and 16-26 entered January 4, 2001. We have
jurisdiction under 35 U.S.C. § 6(b).
2. A copy of Appellant’s reissue claims 1-3 and 16-26 is set forth
in the Claim Appendix of Appellant’s Brief.
3. Independent claims 1, 16, 17, and 18 under appeal read as
follows:
1. (Patent claim) A system of phonosurgery implantation for
insertion by a surgeon through an opening formed in a patient's
thyroid cartilage to stabilize a vocal cord therein, the system
comprising:
(a) a series of implant bodies of different sizes, the implant
bodies each having a holding portion and a series of engaging means
for holding the implant bodies relative to the vocal cord by engaging
the holding portion of the bodies in different positions in the opening
formed in the thyroid cartilage;
(b) a series of sizing instruments, each having a sizing portion
corresponding respectively in size and shape to one of the implant
bodies for enabling a surgeon to determine the implant body to use;
(c) inserter instrument means for engaging the selected implant
body so that the surgeon can insert and move the selected implant
body in the opening in the thyroid cartilage;
(d) wherein the holding portions on the implant bodies are
H-shaped in cross section and substantially the same size and shape.

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16. (Reissue claim) A system of phonosurgery implantation for
insertion by a surgeon through an opening formed in a patient's
thyroid cartilage to medialize a vocal cord therein, the system
comprising:
(a) a series of implant bodies of different sizes, the implant
bodies each having a holding portion and a series of engaging means
for holding the implant bodies relative to the vocal cord by engaging
the holding portion of the bodies in different positions in the opening
formed in the thyroid cartilage;
(b) a series of sizing instruments, each having an elongated
handle with a handle axis, proximal and distal end portions, the distal
end portion having a sizing portion corresponding respectively in size
and shape to one of the implant bodies for enabling a surgeon to
determine the correct size and shape implant body to use;
(c) each of the sizing portions having a sloped surface that
forms an obtuse angle with the handle axis, the sloped surface being
positioned to engage the patient’s vocal cord to be medalized;
(d) an inserter instrument for engaging the selected implant
body so that the surgeon can insert and move the selected implant
body in the opening in the thyroid cartilage;
(e) wherein the holding portions on the implant bodies are
shaped in cross section to connect with the inserter instrument.

17. (Reissue claim) A system of phonosurgery implantation for
insertion by a surgeon through an opening formed in a patient's
thyroid cartilage to medialize a vocal cord therein, the system
comprising:
(a) a plurality of implant bodies of different sizes;
(b) a plurality of sizing instruments of different sizes for
enabling a surgeon to determine the implant body to use, each sizing
instrument having an elongated handle with a handle axis, and
proximal and distal end portions, and the distal end portion having a
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sizing portion corresponding respectively in size and shape to one of
the implant bodies;
(c) each of the sizing portions having a sloped surface that
forms an obtuse angle with the handle axis, the sloped surface being
positioned to engage the patient’s vocal cord to be medalized;
(d) an inserter instrument that enables a surgeon to engage and
move the selected implant body in the opening in the thyroid cartilage.

18. (Reissue claim) A system of phonosurgery implantation for
enabling a surgeon to insert a prosthesis through an opening formed in
a patient's thyroid cartilage to stabilize a vocal cord therein, the
system comprising:
(a) a series of implant bodies of different sizes;
(b) a series of sizing instruments for enabling a surgeon to
determine the implant body to use, each having proximal and distal
end portions, the proximal end portion having a handle, the distal end
portion having a sizing portion corresponding respectively in size and
shape to one of the implant bodies; and
(c) each of the sizing portions having a sloped surface that
forms an obtuse angle with the handle axis, the sloped surface being
positioned to engage the patient’s vocal cord to be medalized.

4. The Examiner rejected added reissue claims 16-26 under
35 U.S.C. § 251 as “being an improper recapture of claimed subject matter
that was deliberately canceled in the application for the patent upon which
the present reissue is based” (Supp. Answer 4-13) .
5. The Examiner rejected reissue claims 1-3 (original patent
claims 1-3) and added reissue claims 16-26 as being based on a defective
reissue oath under 35 U.S.C. § 251 (Supp. Answer 13).
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6. With respect to the rejection under 35 U.S.C. § 251 of claims
16-26, the panel affirms the decision of the Examiner.
7. With respect to the rejection of claims 1-3, the panel reverses
the decision of the Examiner.

Affirmed-In-Part2

II. ISSUES
1. The first issue before the Board is whether Appellant has
established that the Examiner erred in rejecting claims 16-26 under
35 U.S.C. § 251 based on recapture.
2. The second issue before the Board is whether Appellant has
established that the Examiner erred in rejecting claims 1-3 and 16-26 under
35 U.S.C. § 251 based on a defective reissue oath.
III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
A. The Invention of U.S. Patent 5,549,673
1. According to Appellant (U.S. Patent 5,459,673, col. 1,
ll. 10-13):
This invention relates to the field of phonosurgery and,
more particularly, to implants, instruments and a method

2 Also, two new grounds of rejection have been added in Section VI of this
decision.
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of implantation for surgically medializing a paralyzed or
bowed vocal cord.
2. The invention actually claimed in U.S. Patent 6,144,380, is
more specifically directed to “[a] system of phonosurgery implantation for
insertion by a surgeon through an opening formed in a patient's thyroid
cartilage to stabilize a vocal cord” so “the surgeon can insert and move the
selected implant body in the opening in the thyroid cartilage.” (See Patent
claims 1-3).
3. The patent sought to be reissued was based on Application
08/118,097 (which we refer to as the “original application” even though it is
the second application in the sequence), filed September 8, 1993, which is
said to be a continuation of Application 07/511,454 (which we refer to as
“the parent”), filed April 20, 1990, now abandoned.

B. Prosecution history of the parent application
4. As filed, parent application 07/511,454 contained claims 1-17,
directed to a phonosurgery implant, a system of phonosurgery implantation,
and a method of sizing and implanting a phonosurgery prosthesis.
5. Claims 1-11 were directed to the phonosurgery implant.
Claim 2 specifically recited that the implant includes “a sloped surface.”
6. Claims 12-16 were directed to the system of phonosurgery
implantation. Claim 13 depended from claim 12, claim 14 depended from
claim 13, and claims 15 and 16 depended from claim 14.
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7. During prosecution claims 5 and 12 were cancelled and
independent claims 18 and 19 were added. Dependent claim 13 was
amended to depend from claim 18.
8. Claims 18 and 19 were also directed to the system of
phonosurgery implantation. Claim 18 specifically recited “sizing
instruments each with sizing portions corresponding in size and shape to one
of the implant bodies.”
9. On February 8, 1993, the Examiner finally rejected all pending
claims.

C. Prosecution history of the “original” application
10. On September 8, 1993, Appellant filed continuation
Application 08/118,097 to prosecute all pending claims. Additionally,
claims 20-28 were added by amendment. Also, claim 2 was amended to
further define the “sloped surface” portion of the phonosurgery implant
body.
11. On February 14, 1994, the Examiner entered a Restriction
Requirement.
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12. The restriction requirement indicated that original application
08/118,097 contained four independent and distinct inventions as follows:
I. Claims 20-28 drawn to a prosthesis;
II. Claims 1-4 and [6]-11 drawn to a implants;3
III. Claims 13-16 and 18-19 drawn to a system of implantation;
and
IV. Claim 17 drawn to a method of sizing and implanting a
prosthesis.
13. On April 22, 1994, Appellant elected with traverse to prosecute
the invention of Group III, claims 13-16 and 18-19.
14. On August 5, 1994, the Examiner entered a Non-Final Office
Action (“Non-Final Action”).
15. The Non-Final Action responded to Appellant’s traversal of the
restriction requirement. The restriction was (1) deemed proper,
(2) maintained, and (3) made final.
16. Appellant subsequently authorized the cancellation of the
claims directed to Groups I, II, and IV. (Notice of Allowability 3).
17. The Non-Final Action rejected claims 13-16 and 18-19 on
various grounds.
3 Group II was erroneously listed as claims 1-4 and 7-11 by the Examiner in
the Restriction Requirement, but was correctly identified as claims 1-4 and
6-11 by Appellant in the response dated April 22, 1994.
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18. The prior art relied upon by the Examiner in rejecting the
claims was:
Stevens US 3,547,115 Dec. 15, 1970
Ripple US 4,566,466 Jan. 28, 1986

Koufman, Laryngoplastic Phonosurgery, Laryngeal and Tracheal
Reconstruction, 339-350 (1988).

Isshiki, Kojima, Taira, and Shoji, Recent Modifications in Thyroplasty
Type I, Meeting of the Am. Laryngological Ass’n, 777-779 (1989)
(hereinafter “Isshiki”).

19. Claims 13-16 and 18-19 were rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
20. Claims 13 and 18-19 were rejected under 35 U.S.C. § 103 as
being unpatentable over Koufman, Isshiki, Stevens, and Ripple.
21. In the Non-Final Action at page 5 the Examiner also indicated:
Claims 14-16 are deemed to recite patentably unobvious subject
matter because the prior art does not show the claimed features
and the instant disclosure appears to recite criticality . . . of the
specific holding portion, inserting instrument and engaging
means configuration over the prior art, i.e., faster, simpler,
efficient locking.
22. On January 9, 1995, and May 18, 1995, Appellant filed a first
Amendment (“the First Amendment”) and a second Amendment (“the
Second Amendment”) responding to the Examiner’s Non-Final Action.
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23. The First and Second Amendments amended independent
claims 18 and 19, and amended dependent claims 14-16 into independent
form.
24. Amended claim 18 and claim 13 are reproduced below:
18. A system of phonosurgery implantation for insertion by a
surgeon through an opening formed in a patient's thyroid cartilage to
stabilize a vocal cord therein, the system comprising:
(a) a series of implant bodies of different sizes, the implant
bodies each having a holding portion and a series of engaging means
for holding the implant bodies relative to the vocal cord by engaging
the holding portion of the bodies in different positions in the opening
formed in the thyroid cartilage;
(b) a series of sizing instruments, each having a sizing portion
corresponding respectively in size and shape to one of the implant
bodies for enabling a surgeon to determine the implant body to use;
(c) inserter instrument means for engaging the selected implant
body so that the surgeon can insert and move the selected implant
body in the opening in the thyroid cartilage.

13. The system of claim 18, wherein the holding portions on
the implant bodies are substantially the same in size and shape.

25. After entry of the First and Second Amendments, the
application claims were elected Group III claims 13-16 and 18-19 (and
non-elected Groups I, II, and IV claims 1-4, 6-11, 17, and 20-28).
26. In both the First and Second Amendment, Appellant presented
an argument with respect to the patentability of amended claims 14-16.
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27. Appellant’s argument (see below) addressed at least the
following limitations of Appellant’s amended claims 14-16:
(1) wherein the holding portions on the implant bodies are
H-shaped in cross section.
(2) the inserter instrument means includes an elongated portion
with a notched-end adapted to engage the H-shaped holding
portion in a releasable friction fit, the elongated portion
including a telescoping movable rod for disengaging the
implant body.
(3) wherein the series of engaging means includes a series of shims
with openings therein for engaging the holding portions of the
implant bodies, the shims having openings in different locations
for holding the implant bodies in different positions in the
thyroid cartilage.
Limitation (1) is the “specific holding portion” referred to by the
Examiner and Appellant, and was found in amended claims 14
and 15.
Limitation (2) is the “specific inserting instrument” referred to by the
Examiner and Appellant, and was found in amended claim 15.
Limitation (3) is the “specific engaging means” referred to by the
Examiner and Appellant, and was found in amended claim 16.
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28. In the First Amendment at page 5, last two full paragraphs, and
in the Second Amendment at page 6, last two full paragraphs, Appellant
argued the following:
The Examiner felt that Claims 14-16 recited patentably
unobvious subject matter because the prior art does not show
the claimed features and the instant disclosure appears to recite
criticality . . . of the specific holding portion, inserting
instrument and engaging means configuration over the prior art,
i.e., faster, simpler, efficient locking.
Claims 14-16 have been rewritten in independent form
and are believed allowable in view of the Examiner’s
comments. All of these claims now include a holding portion[,]
inserting instrument and engaging means.
The argument addressed limitations (1)-(3) [see Finding of Fact 27] found in
Appellant’s amended claims 14-16.
29. On August 21, 1995, the Examiner entered a Final Office
Action (“Final Action”).
30. Claims 14-16 were indicated as allowable. Claims 13 and
18-19 were again rejected under 35 U.S.C. § 103 as being unpatentable
over Koufman, Isshiki, Stevens, and Ripple.
31. On January 25, 1996, Appellants filed an After Final
Amendment (“the After Final Amendment”) responding to the Examiner's
Final Office Action.
32. The After Final Amendment cancelled claims 13 and 18-19.
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33. On February 6, 1996, the Examiner conducted an interview
with Appellant’s representative. The Examiner entered an Interview
Summary into the record stating:
Claims discussed: 1-4, 6-11, 17, and 20-28.
Prior art discussed: (None)
Description of the general nature of what was agreed to if an
agreement was reached, or any other comments: Authorization was
given to cancel the nonelected, with traverse, claims and for the
extension of time required to do so.
34. On February 14, 1996, a Notice of Allowability was mailed
which stated that pending claims 14-16 were allowed and canceling claims
1-4, 6-11, 17, and 20-28.
35. Consistent with Office practice, application claims 14-16 were
renumbered as patent claims 1-3, respectively, in the course of preparing the
original application for issue.
36. U.S. Patent 5,549,673 issued August 27, 1996, based on the
original application and contained claims 1-3.

D. Prosecution of reissue application
37. Appellant filed reissue application 09/141,186 on August 27,
1998, seeking to reissue U.S. Patent 5,549,673.
38. Appellant presented original patent claims 1-3 along with new
reissue application claims 4-15 for consideration.
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39. Ultimately, reissue claims 4-15 were cancelled and reissue
claims 16-26 were added by amendment.
40. Reissue claims 1-3 and 16-26 were finally rejected.
41. Reissue application claims 1-3 and 16-26 are before the Board
in this appeal.
42. A copy of the claims 1-3 and 16-26 under appeal is set forth in
the Claim Appendix of Appellant’s Brief.

E. Examiner’s Rejections under 35 U.S.C. § 251
43. The Examiner has rejected reissue application claims 16-26
under 35 U.S.C. § 251 maintaining that the claims seek to “recapture”
subject matter surrendered in obtaining allowance of the claims which
appear in the patent sought to be reissued.
44. The Examiner based the rejection of claims 16-26 on the
grounds that when faced in the original application with a rejection under
35 U.S.C. § 103 over Koufman, Isshiki, Stevens, and Ripple, Appellant
made significant amendments (on January 9, 1995, and May 18, 1995) to
claims 14-16 (Supp. Answer 8-9):
(A) Appellant amended dependent claim 14 (depending from
dependent claim 13 which depended from independent claim 18) into
independent form by adding the claim 14 requirement of “wherein the
holding portions on the implant bodies are H-shaped in cross section”
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to the combined subject matter of claims 13 and 18. Amended claim
14 became patent claim 1.
(B) Appellant amended dependent claim 15 (depending from
dependent claim 14) into independent form by adding the claim 14
requirement of “wherein the holding portions on the implant bodies
are H-shaped in cross section” and the claim 15 requirement of “the
inserter instrument means includes an elongated portion with a
notched-end adapted to engage the H-shaped holding portion in a
releasable friction fit, the elongated portion including a telescopingly
movable rod for disengaging the implant body” to the combined
subject matter of claims 13 and 18. Amended claim 15 became patent
claim 2.
(C) Appellant amended dependent claim 16 into independent
form by adding the claim 16 requirement of “wherein the series of
engaging means includes a series of shims with openings therein for
engaging the holding portions of the implant bodies, the shims having
openings in different locations for holding the implant bodies in
different positions in the opening in the thyroid cartilage” to the
combined subject matter of claims 13 and 18. Amended claim 16
became patent claim 3.
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45. Additionally, the Examiner based the rejection of claims 16-26
on the grounds that when faced in the original application with a rejection
under 35 U.S.C. § 103 over Koufman, Isshiki, Stevens, and Ripple,
Appellant made a significant argument with respect to amended claims
14-16. (See Finding of Fact 28 supra with respect to Appellant’s argument
regarding claim limitations (1)-(3) in Finding of Fact 27.)
46. The Examiner reasoned in-part as follows “appellant stated
‘[a]ll of these claims [14-16] now include a holding portion, inserting
instrument and engaging means.’” (Supp. Answer 7, second full paragraph).
47. The Examiner further reasoned that the limitations relied upon
by Appellant in securing the grant of the patent “are completely deleted
(omitted) from all the disputed claims” (Supp. Answer 10) and “the reissue
claims are broader than the original patent claims by not including the
surrender-generating limitations” (Supp. Answer 11).
48. The record supports the Examiner’s findings with respect to
what limitations do not appear in reissue application claims 16-26 which
were present in claims 1-3 of the original application, as allowed.
49. Additionally, the Examiner has rejected reissue application
claims 1-3 and 16-26 under 35 U.S.C. § 251 as being based upon a defective
reissue declaration since the present application seeks “recapture” of subject
matter surrendered in obtaining allowance of the patent claims as noted
above.

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IV. DISCUSSION – REJECTION UNDER 35 U.S.C. § 251

A. Recapture Principles
(1)
The statute

The reissue statute expressly permits a patentee to correct an error
thus permitting patentee to obtain reissue claims broader than the originally
issued patent claims at any time within two (2) years from the date the
original patent issues. More particularly, 35 U.S.C. § 251, ¶¶ 1 and 4,
provide in pertinent part:
Whenever any patent is, through error without any deceptive
intention, deemed wholly or partly inoperative or invalid, by
reason of a defective specification or drawing, or by reason of
the patentee claiming more or less than he had a right to claim
in the patent, the Director shall, on the surrender of such patent
and the payment of the fee required by law, reissue the patent
for the invention disclosed in the original patent, and in
accordance with a new and amended application, for the
unexpired part of the term of the original patent.

No reissued patent shall be granted enlarging the scope of the
claims of the original patent unless applied for within two years
from the grant of the original patent.

(2)
Recapture is not an error
within the meaning of 35 U.S.C. § 251

What has become known as the “recapture rule,” prevents a patentee
from regaining through a reissue patent subject matter that the patentee
surrendered in an effort to obtain allowance of claims in the patent sought to
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be reissued. In re Clement, 131 F.3d 1464, 1468, 45 USPQ2d 1161, 1164
(Fed. Cir. 1997).
If a patentee attempts to “recapture” what the patentee previously
surrendered in order to obtain allowance of original patent claims, that
“deliberate withdrawal or amendment ... cannot be said to involve the
inadvertence or mistake contemplated by 35 U.S.C. § 251, and is not an
error of the kind which will justify the granting of a reissue patent which
includes the [subject] matter withdrawn.” Mentor Corp. v. Coloplast, Inc.,
998 F.2d 992, 995, 27 USPQ2d 1521, 1524 (Fed. Cir. 1993), quoting from
Haliczer v. United States, 356 F.2d 541, 545, 148 USPQ 565, 569 (Ct. Cl.
1966).4 See also Hester Industries Inc. v. Stein, Inc., 142 F.3d 1472, 1480,
46 USPQ2d 1641, 1647 (Fed. Cir. 1998).

(3)
In re Clement

The Federal Circuit’s opinion in Clement discusses a three-step test
for analyzing recapture.
Step 1 involves a determination of whether and in what aspect any
claims sought to be reissued are broader than the patent claims. The Federal
Circuit reasoned that a reissue application claim deleting a limitation or
4 Haliczer is binding precedent. See South Corp. v. United States, 690
F.2d 1368, 215 USPQ 657 (Fed. Cir. 1982) (in banc) (decisions of the
former U.S. Court of Customs and Patent Appeals and former U.S. Court of
Claims decisions are binding precedent).
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element from a patent claim is broader as to that limitation’s or element’s
aspect. 131 F.3d at 1468, 45 USPQ2d at 1164.
Step 2 involves a determination of whether the broader aspects of the
reissue application claims relate to surrendered subject matter. 131 F.3d at
1468-69, 45 USPQ2d at 1164. In this respect, review of arguments and/or
amendments during the prosecution history of the application, which
matured into the patent sought to be reissued, is appropriate. In reviewing
the prosecution history, the Federal Circuit observed that “[d]eliberately
canceling or amending a claim in an effort to overcome a [prior art]
reference strongly suggests that the Applicant admits that the scope of the
claim before cancellation or amendment is unpatentable.” 131 F.3d at 1469,
45 USPQ2d at 1164.
Step 3 is applied when the broadening relates to surrendered subject
matter and involves a determination whether the surrendered subject matter
has crept into the reissue application claim. Id. The following principles
were articulated in Clement, 131 F.3d at 1469-70, 45 USPQ2d at 1165:
Substep (1): if the reissue claim is as broad as or broader
than the canceled or amended claim in all aspects, the recapture
rule bars the claim;

Substep (2): if it is narrower in all aspects, the recapture
rules does not apply, but other rejections are possible;

Substep (3): if the reissue claim is broader in some
aspects, but narrower in others, then:
(a) if the reissue claim is as broad as or broader
in an aspect germane to a prior art rejection, but narrower
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in another aspect completely unrelated to the rejection,
the recapture rule bars the claim;
(b) if the reissue claim is narrower in an aspect
germane to [a] prior art rejection, and broader in an
aspect unrelated to the rejection, the recapture rule does
not bar the claim, but other rejections are possible.

(4)
North American Container

In North American Container, Inc. v. Plastipak Packaging, Inc., 415
F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005), the Federal Circuit had
occasion to further address Substep (3)(a) of Clement.
North American Container involved a reissue patent, which had been
held invalid by the U.S. District Court for the Northern District of Texas.
The district court bottomed its invalidity holding based on a violation of the
recapture rule. During prosecution of an application for patent, an examiner
rejected the claims over a combination of two prior art references:
Dechenne and Jakobsen. To overcome the rejection, North American
Container limited its application claims by specifying that a shape of “inner
walls” of a base of a container was “generally convex.” North American
Container convinced the examiner that the shape of the base, as amended,
defined over “both the Dechenne patent, wherein the corresponding wall
portions 3 are slightly concave ... and the Jakobsen patent, wherein the entire
reentrant portion is clearly concave in its entirety.” 415 F.3d at 1340, 75
USPQ2d at 1549. After a patent issued containing the amended claims,
North American Container filed a reissue application seeking reissue claims
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in which (1) the language “inner wall portions are generally convex” was
eliminated, but (2) the language “wherein the diameter of said re-entrant
portion is in the range of 5% to 30% of the overall diameter of said side
wall” was added. Thus, the claim sought be reissued was broader in some
aspects and narrower in other aspects.
The Federal Circuit, applying the Clement three-step test, held that the
reissue claims were broader in scope than the originally-issued claims in that
they no longer require the “inner walls” to be “generally convex.” The
Federal Circuit further found that the broadened aspect (i.e., the broadened
limitation) “relate[d] to subject matter that was surrendered during
prosecution of the original-filed claims.” 415 F.3d at 1350, 75 USPQ2d at
1557. The Federal Circuit observed “the reissue claims were not narrowed
with respect to the ‘inner wall’ limitation, thus avoiding the recapture rule.”
The Federal Circuit stated:
[t]hat the reissue claims, looked at as a whole, may be of
“intermediate scope” is irrelevant. . . . [T]he recapture rule is
applied on a limitation-by-limitation basis, and ... [North
American Container’s] deletion of the “generally convex”
limitation clearly broadened the “inner wall” limitation.

Id. Thus, the Federal Circuit in North American Container further refined
Substep (3)(a) of Clement: “broader in an aspect germane to a prior art
rejection” means broader with respect to a specific limitation (1) added to
overcome prior art in prosecution of the application which matured into the
patent sought to be reissued and (2) eliminated in the reissue application
claims.
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(5)
Ex parte Eggert

The opinion in Ex parte Eggert, 67 USPQ2d 1716 (Bd. Pat. App. &
Int. 2003), issued as a precedential opinion, is also part of the recapture
precedent applicable to proceedings before the United States Patent &
Trademark Office (USPTO). Eggert was entered on May 29, 2003, prior to
the Federal Circuit’s North American Container decision. In Eggert, a
majority stated that “[i]n our view, the surrendered subject matter is the
outer circle of Drawing 1 [the rejected claim prior to the amendment that
resulted in the claim being issued] because it is the subject matter appellant
conceded was unpatentable.” 67 USPQ2d at 1717. The majority further
held that “in our view” subject matter narrower than the rejected claim but
broader than the patented claim is not barred by the recapture rule. Id. The
majority explained that if the finally rejected claim was ABC and the patent
claim was ABCDEF, there would be recapture for ABC or anything broader
than ABC, but not for claims directed to ABCX, ABCDBr, ABCEF, or
ABrBCDEF, because those claims would be narrower than the finally
rejected claim ABC. 67 USPQ2d at 1718. In its opinion, the majority
recognized that the Federal Circuit had held that “the mere presence of
narrowing limitations in the reissue claim is not necessarily sufficient to save
the reissue claim from the recapture rule.” 67 USPQ at 1729.
Board of Patent Appeals and Interferences Standard Operating
Procedure 2 (Revision 6) (August 10, 2005) mandates that a published
precedential opinion of the Board is binding on all judges of the Board
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unless the views expressed in an opinion in support of the decision, among a
number of things, are inconsistent with a decision of the Federal Circuit. In
our view, the majority view in Eggert is believed to be inconsistent with the
subsequent Federal Circuit decision in North American Container with
respect to the principles governing application of Substep (3)(a) of Clement.
The Eggert majority’s analysis is believed to be consistent with North
American Container in that the majority applied the three-step framework
analysis set forth in applicable Federal Circuit opinions, e.g., (1) Pannu v.
Storz Instruments, Inc., 258 F.3d 1366, 1370-71, 59 USPQ2d 1597, 1600
(Fed. Cir. 2001); (2) Clement, 131 F.3d at 1470, 45 USPQ2d at 1165 and (3)
Hester, 142 F.3d at 148, 46 USPQ2d at 1648-49. However, the Eggert
majority also held that the surrendered subject matter was the rejected claim
only rather than the amended portion of the issued claim. 67 USPQ2d at
1717. At a similar point in the recapture analysis, North American
Container has clarified the application of the three-step framework analysis.
North American Container holds that the “inner walls” limitation (a portion
of the issued claim that was added to the rejected claim by amendment) was
“subject matter that was surrendered during prosecution of the original-filed
claims.” 415 F.3d at 1350, 75 USPQ2d at 1557.
It is believed that the Substep (3)(a) rationale of the Eggert majority
(1) is not consistent with the rationale of the Federal Circuit in North
American Container and (2) should no longer be followed or be applicable
to proceedings before the USPTO.
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(6)
What subject matter is surrendered?

In a case involving Substep (3)(a) of Step 3 of Clement, what is the
subject matter surrendered?
Is it
(1) the subject matter of an application claim which was
amended or canceled or
(2) the subject matter of an application claim which was
amended or canceled and, on a limitation-by-limitation
basis, the territory falling between the scope of
(a) the application claim which was canceled or
amended and
(b) the patent claim which was ultimately issued?
We believe North American Container stands for the proposition that it is
(2) and not (1). Accordingly, we hold that it is (2).

(7)
Clement principles are not per se rules

Our reading of our appellate reviewing court’s recapture opinions, as
a whole, suggests that the Clement steps should not be viewed as per se
rules. For example, we note the following in Clement, 131 F.3d at 1469, 45
USPQ2d at 1164:
Although the recapture rule does not apply in the absence of
evidence that the Appellant’s amendment was “an admission
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that the scope of that claim was not in fact patentable,” Seattle
Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818,
826, 221 USPQ 568, 574 (Fed. Cir. 1984), “the court may draw
inferences from changes in claim scope when other reliable
evidence of the patentee’s intent is not available,” Ball [Corp.
v. United States], 729 F.2d at 1436, 221 USPQ at 294.
Deliberately canceling or amending a claim in an effort to
overcome a reference strongly suggests that the Appellant
admits that the scope of the claim before the cancellation or
amendment is unpatentable, but it is not dispositive because
other evidence in the prosecution history may indicate the
contrary. See Mentor [Corp. v. Coloplast, Inc.], 998 F.2d at
995-96, 27 USPQ2d at 1524-25; Ball, 729 F.2d at 1438, 221
USPQ at 296; Seattle Box Co., 731 F.2d at 826, 221 USPQ at
574 (declining to apply the recapture rule in the absence of
evidence that the Appellant’s “amendment ... was in any sense
an admission that the scope of [the] claim was not patentable”);
Haliczer [v. United States], 356 F.2d at 545, 148 USPQ at 569
(acquiescence in the rejection and acceptance of a patent whose
claims include the limitation added by the Appellant to
distinguish the claims from the prior art shows intentional
withdrawal of subject matter); In re Willingham, 282 F.2d 353,
354, 357, 127 USPQ 211, 213, 215 (CCPA 1960) (no intent to
surrender where the Appellant canceled and replaced a claim
without an intervening action by the examiner). Amending a
claim “by the inclusion of an additional limitation [has] exactly
the same effect as if the claim as originally presented had been
canceled and replaced by a new claim including that
limitation.” In re Byers, 230 F.2d 451, 455, 109 USPQ 53, 55
(CCPA 1956). [Footnote and citations to the CCPA reports
omitted.]

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(8)
Allocation of burden of proof

What is the proper allocation of the burden of proof in ex parte
examination?
For reasons that follow, we hold that an Examiner has the burden of
making out a prima facie case of recapture. The Examiner can make out a
prima facie case of recapture by establishing that the claims sought to be
reissued fall within Substeps (1) or 3(a) of Step 3 of Clement.
For reasons that follow, we also hold that once a prima facie case of
recapture is established, the burden of persuasion then shifts to the Appellant
to establish that the prosecution history of the application, which matured
into the patent sought to be reissued, establishes that a surrender of subject
matter did not occur (or that the reissue claims are materially narrowed).
As will become apparent, our rationale parallels the practice in
determining whether subject matter is surrendered when a doctrine of
equivalents analysis occurs in infringement cases.
(9)
Burden of proof analysis

Our analysis begins with an observation made by our appellate
reviewing court in Hester, 142 F.3d at 1481-82, 46 USPQ2d at 1649:
[A]s recognized in Ball, the recapture rule is based on
principles of equity[5] and therefore embodies the notion of
5 The reissue statute has been characterized as being remedial in nature,
based on fundamental principles of equity and fairness and should be
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estoppel. 729 F.2d at 1439, 221 USPQ at 296. Indeed, the
recapture rule is quite similar to prosecution history estoppel,
which prevents the application of the doctrine of equivalents in
a manner contrary to the patent’s prosecution history. See
Warner-Jenkinson Co. v. Hilton Davis Chem. Co., [520 U.S.
17, 33,] 117 S. Ct. 1040, 1051[, 41 USPQ2d 1865, 1873]
(1997). Like the recapture rule, prosecution history estoppel
prevents a patentee from regaining subject matter surrendered
during prosecution in support of patentability. See id.
Hester argues that an analogy cannot be made with
prosecution history estoppel because the reissue procedure and
prosecution history estoppel are the antithesis of one another--
reissue allows an expansion of patent rights whereas
prosecution history estoppel is limiting. However, Hester’s
argument is unpersuasive. The analogy is not to the broadening
aspect of reissue. Rather, the analogy is with the recapture rule,
which restricts the permissible range of expansion through
reissue just as prosecution history estoppel restricts the
permissible range of equivalents under the doctrine of
equivalents.
This court earlier concluded that prosecution history
estoppel can arise by way of unmistakable assertions made to
the Patent Office in support of patentability, just as it can arise
by way of amendments to avoid prior art. See, e.g., Texas
Instruments, Inc. v. International Trade Comm’n, 988 F.2d
1165, 1174, 26 USPQ2d 1018, 1025 (Fed. Cir. 1993).

construed liberally. In re Bennett, 766 F.2d 524, 528, 226 USPQ 413, 416
(Fed. Cir. 1985) (in banc); In re Willingham, 282 F.2d 353, 354-55, 127
USPQ 211, 214 (CCPA 1960). Nevertheless, fairness to the public must
also be considered. As stated in Mentor, "the reissue statement cannot be
construed in such a way that competitors, properly relying on prosecution
history, become patent infringers when they do so." 998 F.2d at 996, 27
USPQ2d at 1525.
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See also Judge Michel’s opinion concurring-in-part and dissenting-in-part in
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 234 F.3d 558,
602, 56 USPQ2d 1865, 1899 (Fed. Cir. 2000) (Festo I), vacated and
remanded, 535 U.S. 722, 122 S. Ct. 1831, 62 USPQ2d 1705 (2002) (Festo
II)6 (Michel, J.,):
[T]he law of prosecution history estoppel has developed with
equal applicability to reissue patents and original patents whose
claims were amended during prosecution. By at least 1879, the
Supreme Court recognized that the process of obtaining a
reissue patent precluded the patentee from recapturing that
which he had disclaimed (i.e., surrendered), through the
reissuance process.

(10)
Relevance of prosecution history

“Surrendered subject matter” is defined in connection with
prosecution history estoppel in Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co., Ltd., 535 U.S. 722, 733-34, 122 S. Ct. 1831, 1838,
62 USPQ2d 1705, 1710-11 (2002) (Festo II):
The doctrine of equivalents allows the patentee to claim those
insubstantial alterations that were not captured in drafting the
original patent claim but which could be created through trivial
changes. When, however, the patentee originally claimed the
subject matter alleged to infringe but then narrowed the claim in
6 The “Festo” convention used in this opinion is:
Festo I is the original in banc decision of the Federal Circuit.
Festo II is the decision of the Supreme Court.
Festo III is the decision of the Federal Circuit on remand.
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response to a rejection, he may not argue that the surrendered
territory comprised unforeseen subject matter that should be
deemed equivalent to the literal claims of the issued patent. On
the contrary, “[b]y the amendment [the patentee] recognized
and emphasized the difference between the two phrases[,] ...
and [t]he difference which [the patentee] thus disclaimed must
be regarded as material.” Exhibit Supply Co. v. Ace Patents
Corp., 315 U.S. 126, 136-37, 62 S. Ct. 513, 518-19 [52 USPQ
275, 279-80] (1942).

Festo II goes on to comment, 535 U.S. at 737-41, 122 S. Ct. at 1840-
42, 62 USPQ2d at 1712-14:
[Prosecution history estoppel’s] reach requires an examination
of the subject matter surrendered by the narrowing amendment.
[A] complete bar [would avoid] this inquiry by establishing a
per se rule; but that approach is inconsistent with the purpose of
applying the estoppel in the first place-to hold the inventor to
the representations made during the application process and to
the inferences that may reasonably be drawn from the
amendment (emphasis added).
***
A patentee’s decision to narrow his claims through amendment
may be presumed to be a general disclaimer of the territory
between the original claim and the amended claim. Exhibit
Supply, 315 U.S., at 136-137, 62 S. Ct. 513 (“By the
amendment [the patentee] recognized and emphasized the
difference between the two phrases and proclaimed his
abandonment of all that is embraced in that difference”). There
are some cases, however, where the amendment cannot
reasonably be viewed as surrendering a particular equivalent.
The equivalent may have been unforeseeable at the time of the
application; the rationale underlying the amendment may bear
no more than a tangential relation to the equivalent in question;
or there may be some other reason suggesting that the patentee
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could not reasonably be expected to have described the
insubstantial substitute in question. In those cases the patentee
can overcome the presumption that prosecution history estoppel
bars a finding of equivalence (emphasis added).

***
When the patentee has chosen to narrow a claim, courts may
presume the amended text was composed with awareness of
this rule and that the territory surrendered is not an equivalent
of the territory claimed. In those instances, however, the
patentee still might rebut the presumption that estoppel bars a
claim of equivalence. The patentee must show that at the time
of the amendment one skilled in the art could not reasonably be
expected to have drafted a claim that would have literally
encompassed the alleged equivalent (emphasis added).

The same policy considerations that prevent a patentee from urging
equivalents within what the Supreme Court refers to as “surrendered
territory” should prima facie prohibit the patentee from being able to claim
subject matter within the surrendered territory in reissue. Accordingly, the
“surrendered subject matter” that may not be recaptured through reissue
should be presumed to include subject matter broader than the patent claims
in a manner directly related to (1) limitations added to the claims by
amendment (either by amending an existing claim or canceling a claim and
replacing it with a new claim with that limitation) to overcome a
patentability rejection and (2) limitations argued to overcome a patentability
rejection without amendment of a claim. These presumptions are believed
to place practical and workable burdens on examiners and Appellant.

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(11)
Admissible evidence in rebuttal showing

As in the case of surrender when applying the doctrine of equivalents,
a reissue Appellant should have an opportunity to rebut any prima facie case
made by an Examiner.
What evidence may an Appellant rely on to rebut any prima facie case
of recapture?
We hold that the admissible rebuttal evidence generally should be
limited to (1) the prosecution history of the application which matured into
the patent sought to be reissued and (2) showings related to what was known
by a person having ordinary skill in the art at the time an amendment was
made. Nevertheless, we will not attempt to divine, at this time, all evidence
that might be relevant. As with other issues that come before the USPTO,
such as obviousness and enablement, the evidence to be presented will vary
on a case-by-case basis, as will the analysis of that evidence.
“It is clear that in determining whether ‘surrender’ of subject matter
has occurred, the proper inquiry is whether an objective observer viewing
the prosecution history would conclude that the purpose of the patentee's
amendment or argument was to overcome prior art and secure the patent.”
Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1323, 80 USPQ2d 1495, 1502
(Fed. Cir. 2006). Thus, we also hold that an Appellant must show that at the
time the amendment was made, an “objective observer” could not
reasonably have viewed the subject matter broader than any narrowing
amendment as having been surrendered (or that an “objective observer”
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would view the reissue claims as materially narrowed). The showing
required to be made by Appellant are consistent with the public notice
function of claims. Nevertheless, some limited extrinsic evidence may be
relevant. However, extrinsic evidence unavailable to an “objective
observer” at the time of the amendment is not relevant to showing that an
“objective observer” could not reasonably have viewed the subject matter as
having been surrendered. Limiting the nature of the admissible evidence is
believed to be consistent with the Federal Circuit’s decision on remand
following Festo II. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
Ltd., 344 F.3d 1359, 1367, 68 USPQ2d 1321, 1326 (Fed. Cir. 2003), cert.
denied, 541 U.S. 988 (2004) (Festo III).
On remand, the Federal Circuit notes (Id. at 1367-70, 68 USPQ2d at
1326-29):
[W]e reinstate our earlier holding that a patentee’s rebuttal of
the Warner-Jenkinson presumption is restricted to the evidence
in the prosecution history record. Festo [I], 234 F.3d at 586 &
n.6; see also Pioneer Magnetics, 330 F.3d at 1356 (stating that
only the prosecution history record may be considered in
determining whether a patentee has overcome the Warner-
Jenkinson presumption, so as not to undermine the public
notice function served by that record). If the patentee
successfully establishes that the amendment was not for a
reason of patentability, then prosecution history estoppel does
not apply.

***
. . . By its very nature, objective unforeseeability depends on
underlying factual issues relating to, for example, the state of
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the art and the understanding of a hypothetical person of
ordinary skill in the art at the time of the amendment.
Therefore, in determining whether an alleged equivalent would
have been unforeseeable, a district court may hear expert
testimony and consider other extrinsic evidence relating to the
relevant factual inquiries.
. . . As we have held in the Warner-Jenkinson context, that
reason should be discernible from the prosecution history
record, if the public notice function of a patent and its
prosecution history is to have significance. See id. at 1356
(“Only the public record of the patent prosecution, the
prosecution history, can be a basis for [the reason for the
amendment to the claim]. Otherwise, the public notice function
of the patent record would be undermined.”); Festo [I], 234
F.3d at 586 (“In order to give due deference to public notice
considerations under the Warner-Jenkinson framework, a patent
holder seeking to establish the reason for an amendment must
base his arguments solely upon the public record of the patent’s
prosecution, i.e., the patent’s prosecution history. To hold
otherwise--that is, to allow a patent holder to rely on evidence
not in the public record to establish a reason for an amendment-
-would undermine the public notice function of the patent
record.”). Moreover, whether an amendment was merely
tangential to an alleged equivalent necessarily requires focus on
the context in which the amendment was made; hence the resort
to the prosecution history. Thus, whether the patentee has
established a merely tangential reason for a narrowing
amendment is for the court to determine from the prosecution
history record without the introduction of additional evidence,
except, when necessary, testimony from those skilled in the art
as to the interpretation of that record.
. . . When at all possible, determination of the third rebuttal
criterion should also be limited to the prosecution history
record. . . . We need not decide now what evidence outside the
prosecution history record, if any, should be considered in
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determining if a patentee has met its burden under this third
rebuttal criterion.

We interpret Festo III to generally, perhaps effectively, limit the
admissible rebuttal evidence to the prosecution history record and extrinsic
evidence related to the knowledge of the hypothetical person of ordinary
skill in the art at the time of the amendment. Admitting evidence not
available to the public, such as an affidavit of an attorney giving mental
impressions from the attorney who made the amendment, would undermine
the public notice function of the patent and its prosecution history.

(12)
Materially Narrowed in Overlooked Aspects

When reissue claims are narrower than the patent claims with respect
to features other than the surrender generating feature, then the reissue
claims may be materially narrowed relative to the claims prosecuted and
issued in the patent, thereby avoiding the recapture rule.
The Federal Circuit in North American Container characterized the
second and third steps in applying the recapture rule as determining
“whether the broader aspects of the reissue claims relate to subject matter
surrendered in the original prosecution” and “whether the reissued claims
were materially narrowed in other respects, so that the claims may not have
been enlarged, and hence avoid the recapture rule.” 415 F.3d at 1349, 75
USQ2d at 1556 (emphases added), citing for authority Pannu, 258 F.3d at
1371, 59 USPQ2d at 1600. The language “materially narrowed in other
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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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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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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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The reissued claim in Pannu was narrowed by requiring the snag
resistant means to be “at least three times greater” than the width of the
haptics and by requiring the snag resistant means to be “substantially
coplanar” with the haptics. 258 F.3d at 1372, 59 USPQ2d at 1600. As
revealed in the underlying District Court decision, these same or similar
limitations were present in claims throughout prosecution of the original
patent application. Pannu v. Storz Instruments, Inc., 106 F. Supp. 2d 1304,
1308 (S.D Fla. 2000). For this reason, the District Court held that the
recapture rule had not been avoided because the narrowing limitations were
not overlooked aspects of the invention and did not materially narrow the
claim. Id., 106 F. Supp 2d at 1308-09, citing for authority Hester Indus.,
142 F.3d at 1483, 45 USPQ2d at 1650 and Clement, 131 F.3d at 1469, 45
USPQ2d at 1165.
This factual background more fully illuminates the Federal Circuit’s
determination in Pannu that the reissued claims were not narrowed in any
material respect compared with their broadening. This determination is not
based on the fact that the narrowing limitations of the reissue claims were
unrelated to their broadening. Rather, it is based on the fact that these same
or similar limitations had been prosecuted in the original patent application
and therefore were not overlooked aspects of the invention and did not
materially narrow the reissue claims.
The reissue claims in Clement were both broader and narrower in
aspects germane to a prior art rejection. 131 F.3d at 1470, 45 USPQ2d at
1165. However, the narrower limitation recited in the Clement reissue
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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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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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putting the cart before the horse. A patentee seeking a reissue claim which
is barred by recapture is not entitled to a reissue patent under 35 U.S.C.
§ 251. If there is no reissue patent, there can be no intervening rights.

(14)
Public Notice

We believe that any recapture analysis must be bottomed principally
on a “public notice” analysis which can occur only after a record becomes
“fixed.” In the case of a patent, the “claims” and the “prosecution history”
become fixed at the time the patent is issued--not during “fluid” patent
prosecution where claims and arguments can change depending on the
circumstances, e.g., prior art applied and amendments to claims. It is from a
fixed perspective that the public (not the patentee) must make an analysis of
what the patentee surrendered during prosecution. Moreover, Appellant (not
the public) control what amendments and arguments are presented during
prosecution. When an amendment or argument is presented, it is the
Appellant that should be in the best position to analyze what subject matter
(i.e., territory to use the Supreme Court’s language) is being surrendered (or
explain why the reissue claims are materially narrowed).
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Our belief is supported by what appears to be dicta in MBO
Laboratories, Inc. v. Becton, Dickinson & Company, 474 F.3d 1323, 1331-
32, 81 USPQ2d 1661, 1666-67 (Fed. Cir. 2007):
The recapture rule is a limitation on the ability of patentees to
broaden their patents after issuance. . . . . Section 251 is
“remedial in nature, based on fundamental principles of equity
and fairness, and should be construed liberally.” However, the
remedial function of the statute is limited. Material which has
been surrendered in order to obtain issuance cannot be
reclaimed via Section 251: . . . It is critical to avoid allowing
surrendered matter to creep back into the issued patent, since
competitors and the public are on notice of the surrender and
may have come to rely on the consequent limitations on claim
scope. . . . (“[T]he recapture rule ... ensur[es] the ability of the
public to rely on a patent’s public record.”). The public’s
reliance interest provides a justification for the recapture rule
that is independent of the likelihood that the surrendered
territory was already covered by prior art or otherwise
unpatentable. The recapture rule thus serves the same policy as
does the doctrine of prosecution history estoppel: both operate,
albeit in different ways, to prevent a patentee from encroaching
back into territory that had previously been committed to the
public. (citations omitted.)

B. § 251- The Examiner’s Prima Facie Case
Our Findings of Fact 44-47 set out the basis upon which the Examiner
made a recapture rejection. As noted in Finding of Fact 48, the record
supports the Examiner’s findings with respect to claims 16-26.
Basically, in the application which matured into the patent now sought
to be reissued, the Examiner rejected originally filed independent claim 18
and dependent claim 13 (depending from claim 18) over the prior art.
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Appellant proceeded to re-write original application claims 14-16 (which
depended from claim 13) in independent form. Amended application claims
14-16 ultimately issued as patent claims 1-3.
The Examiner made three points all as set out in Findings of
Fact 44-46:
(1) when faced with a rejection in the original application, Appellant
made significant amendments (See Finding of Fact 44);
(2) when faced with a rejection in the original application, Appellant
made a significant argument (See Findings of Fact 45 and 28);
(3) reissue claims 16-26 are broader than the original patent claims
with respect to each of the limitations added and the argument
made to overcome the rejection (See Findings of Fact 44-47).
The Examiner’s accurate factual analysis with respect to claims 16-26
demonstrates that the Examiner has made out a prima facie case of recapture
consistent with the test set forth in Clement and amplified in Hester.
Further, we hold that with respect to the Examiner’s rejection of
claims 16-26, the burden of persuasion now shifts to the Appellant to
establish that the prosecution history of the application, which matured into
the patent sought to be reissued, establishes that a surrender of subject matter
did not occur or that the reissued claims were materially narrowed.
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C. § 251 – Appellant’s Response8
(1)
Argument That Surrender Did Not Occur
With respect to reissue claims 16-26, Appellant argues “Applicant did
not admit during prosecution of the original patent application that the
elements in the independent claims were necessary to make them
patentable.” (Br. 3). We disagree.
As discussed in Section IV. B. supra, the Examiner has set forth a
prima facie case. We particularly note FF 28 and FF 46 which are directed
to Appellant’s own statements about the inclusion in the patent claims of
specific holding portion (patent claims 1 and 2), inserting instrument (patent
claim 2) and engaging means (patent claim 3) configurations to distinguish
over the prior art. Contrary to Appellant’s contention, we conclude that
Appellant’s amendments (FF 23 and 44) and argument (FF 27, 28, and 46)
resulted in a presumption of surrender.
Our conclusion is entirely consistent with the Federal Circuit’s en
banc decision in Honeywell Int'l, Inc. v. Hamilton Sundsrand Corp., 370
F.3d 1131, 71 USPQ2d 1065 (Fed. Cir. 2004), cert. denied, 125 S. Ct. 2928
(2005) (amending a first independent claim which has been rejected over the
prior art by incorporating the limitations of a second dependent claim which
had not been rejected, held to be an amendment involving "surrender" in the
context of the doctrine of equivalents). See also, Deering Precision
8 Appellant’s response is contained in the Brief (Br.) filed August 6, 2001,
fully replacing the defective Brief filed June 14, 2001.
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Instruments, L.L.C. v. Vector Distribution Systems, Inc., 347 F.3d 1314,
1325, 68 USPQ2d 1716, 1723-24 (Fed. Cir. 2003), cert. denied, 540 U.S.
1184 (2004), where the Federal Circuit states:
As an initial note, the only asserted independent claim
that is arguably subject to a narrowing amendment during
prosecution is issued claim 1. This claim, filed as claim 11,
essentially incorporated original claim 1 and original dependent
claim 3. Original claim 9 was not amended during prosecution
and issued as independent claim 4 in unamended form. In
response to the first Office Action rejecting claim 1 under
35 U.S.C. § 103(a) and objecting to claim 3 because it
depended from rejected claim 1, the applicants deleted claims 1
and 3 and added new independent claim 11.
Deering's addition of independent claim 11, coupled with
the clear surrender of the broader subject matter of the deleted
original independent claim presumptively bars Deering from
arguing infringement under the doctrine of equivalents. As the
Supreme Court noted, the correct focus is on whether the
amendment surrendered subject matter that was originally
claimed for reasons related to patentability. Festo II, 535 U.S.
at 736, 122 S.Ct. 1831. Here, the patentees clearly disclaimed
the territory between the original claim 1 and new claim 1 as
issued. Id. at 740, 122 S.Ct. [at] 1831. Original claim 1
claimed “a sliding weight movably carried by said beam for
movement along said scale.” In response to the examiner's
rejection under 35 U.S.C. § 103(a), the applicants deleted
original claims 1 and 3 and settled for claims containing the
narrower requirement that a portion of the sliding weight be
disposed substantially in a plane defined by the fulcrums
originally present in claim 3. The territory between the sliding
weight limitation of original claim 1 and the Zero Position
Limitation was thus surrendered by the patentees. See Pioneer
Magnetics, Inc. v. Micro Linear Corp., 330 F.3d 1352, 1357 [66
USPQ2d 1859, 1862] (Fed. Cir. 2003).
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Appellant further argues “that there were three independent claims
with varying scope indicates that there were various patentable aspects of the
invention.” (Br. 3). For purposes of resolving the appeal, we will agree.
Appellant’s three patent claims each include at least one of three
different specific limitations that distinguish that claim over the prior art.
However, Appellant fails to explain why he believes this precludes a
recapture rejection when claims are presented which include none of the
three surrender generating limitations. Thus, Appellant’s argument does not
rebut the presumption of surrender.

(2)
Argument That Claims 16-26 Are Materially Narrowed
As to An Overlooked Aspect
Appellant argues “[c]laims 16-18 . . . include a [limitation] that was
never a part of the original prosecution and therefore the inclusion of this
[limitation] eliminates any ‘recapture’ issue.” (Br. 3). We disagree.
We agree with Appellant that a reissue claim avoids recapture when it
is materially narrowed with respect to an overlooked aspect. See Section IV.
A. (12) supra. However, we do not find that Appellant has demonstrated
such in the current reissue application. While we agree that the claims
presented during the prosecution of the applications which resulted in the
patent do not explicitly recite a sloped surface on the sizing instruments, we
are unable to find that this limitation was overlooked.
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The burden is on Appellant to show that failure to claim a sloped
surface on the sizing instruments was an oversight. See Section IV. A. (11)
supra. We particularly note the following facts: (1) application claim 2
recited that the implant included a sloped surface (FF 5 and 10), and
(2) application claim 18 recited that the sizing instruments corresponded in
size and shape to the implants (FF 8 and 24). Given these facts, Appellant’s
failure to explicitly import the limitation found in application claim 2 into
application claim 18 looks more like a prosecution choice rather than an
oversight. In this case, Appellant’s failure to explicitly claim the limitation
is not sufficient by itself to show that the limitation was overlooked. Thus,
contrary to Appellant’s contention, we conclude that an “objective observer”
would not view the newly claimed limitation as an overlooked aspect.
Therefore, this argument fails to show Examiner erred in rejecting
based on recapture.

(3)
Claims 1-3
The Examiner has rejected reissue application claims 1-3 under
35 U.S.C. § 251 as being based upon a defective reissue declaration since
the present application seeks “recapture” of subject matter surrendered in
obtaining allowance of the patent claims. We reverse this rejection.
Because claims 1-3 are not subject to the recapture rule, a defective
declaration would not, in and of itself, invalidate them. See Clement, 131
F.3d at 1472, 45 USPQ2d at 1167.
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V. NEW GROUNDS OF REJECTION
A. 35 U.S.C. § 251
We reject reissue claims 18 and 20-26 under 35 U.S.C. § 251, using
our authority under 37 C.F.R. § 41.50(b).
Appellant’s reissue oath alleges “I erred by claiming less of my
invention than I had a right to claim.” Even if we adopt Appellant’s position
with respect to recapture, we find no such error with respect to claims 18 and
20-26. As to the subject matter of these claims, the prosecution of
Application 08/118,097, its parent application, and the patent resulting from
Application 08/118,097 are all error free. As to these claims, Patentee
claimed exactly what they had a right to claim in the patent, no more, no
less.
Appellant’s prosecution history shows that responsive to a restriction
requirement, Appellant elected to prosecute an application directed to a
distinct invention, i.e., a system of implantation. (See FF 11-13 and 16).
Reissue claims 18 and 20-26 are directed to a different invention than that of
patent claims 1-3. (See FF 1-2). Reissue claims 18 and 20-26 do not result
in implantation (i.e., insertion) of anything. Therefore, contrary to the
preambles of these claims they are not a system of implantation. Rather,
these reissue claims merely recite a series of implants and a series of sizing
instruments.
Appellant is estopped from obtaining by reissue claims which,
because of a requirement for restriction in which he had acquiesced, he
could not claim in his patent. See In re Orita, 550 F.2d 1277, 1280,
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193 USPQ 145, 148 (CCPA 1977). Appellant cannot now rely on the
reissue statute, in order to undo the consequences of his attorney’s deliberate
choice. In re Serenkin, 479 F.3d 1359, 1365, 81 USPQ2d 2011, 2014
(Fed. Cir. 2007).

B. 35 U.S.C. § 112, second paragraph
We reject reissue claims 16-26 under 35 U.S.C. § 112, second
paragraph, as being indefinite, using our authority under 37 C.F.R.
§ 41.50(b),
Part (c) of each of reissue claims 16-18 ends with the term
“medalized” which we believe should read –medialized–.

C. 37 C.F.R. § 41.50(b)
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner …

(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record …
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D. Impact of New Rejection on This Decision
In addition to affirming the Examiner’s rejection of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Bd.R. 41.50(b) provides that a decision including a
new ground of rejection shall not be considered final for purposes of judicial
review.
With respect to the affirmed rejection, Appellant may file a single
request for rehearing within two months from the date of this decision under
§ 41.52(a)(1).
With respect to the new ground of rejections, the Appellant, within
two months from the date of this decision must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of proceedings (37 C.F.R. § 41.50(b)) as to the rejected claims:
(1) Submit an appropriate amendment of the claims so
rejected or a showing of facts relating to the claims so rejected,
or both, and have the matter reconsidered by the Examiner, in
which event the application will be remanded to the Examiner.
(2) Request rehearing under § 41.50(b)(2) by the Board
of Patent Appeals and Interferences upon the same record. A
rehearing under this section must also state all other grounds
upon which rehearing is sought.
Should the Appellant elect to prosecute further before the Examiner,
in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145
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with respect to the affirmed rejection, the effective date of the affirmance is
deferred until conclusion of the prosecution before the Examiner unless, as a
mere incident to the limited prosecution, the affirmed rejection is overcome.
If the Appellant elects further prosecution before the Examiner and
further prosecution does not result in allowance of the application,
abandonment or a second appeal, this application should be returned to the
Board of Patent Appeals and Interferences for entry of a final decision with
respect to the affirmed rejection, including any action on any timely request
for reconsideration thereof.

VI. CONCLUSIONS OF LAW
(1) Appellant has failed to establish that the Examiner erred in
rejecting claims 16-26 under 35 U.S.C. § 251 based on recapture.
Specifically, Appellant’s arguments have not rebutted the presumption, upon
which the Examiner’s rejection is based, i.e., that at the time of the
amendment an objective observer would reasonably have viewed the subject
matter of the narrowing amendment and limitations argued in the parent as
having been surrendered.
(2) Claims 16-26 are not patentable.
(3) The Examiner erred in rejecting claims 1-3 under 35 U.S.C. § 251
based on a defective reissue oath.
(4) On the record before us, claims 1-3 have not been shown to be
unpatentable.
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(5) Since we have entered a new rejection, our decision is not a final
agency action.

VII. DECISION
Upon consideration of the record, and for the reasons given, we affirm
the rejection of claims 16-26 under 35 U.S.C. § 251 based on recapture; we
reverse the rejection of claims 1-3 under 35 U.S.C. § 251 based on a
defective reissue oath; we reject reissue claims 18 and 20-26 under
35 U.S.C. § 251; and we reject reissue claims 16-26 under 35 U.S.C. § 112,
second paragraph.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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