Ex Parte Kraus

Board of Patent Appeals and Interferences

Feb 22, 2006

08230083 (B.P.A.I. Feb. 22, 2006)

1 Application filed April 20, 1994, seeking to reissue U.S. Patent
5,105,731, issued April 21, 1992, based on application 07/642,475, filed
January 17, 1991. The real party in interest is TRW Automotive Electronics &
Components Km/h and Co., KG, previously known as TRW United-Carr GmbH and Co.,
KG. Appeal Brief (second submission filed October 4, 2000), page 1.
2 The appeal was originally heard by Administrative Patent Judges McQuade,
Nase and Delmendo. Subsequent to oral argument, the panel was expanded to
include Chief Administrative Patent Judge Fleming and Administrative Patent
Judges Garris, Jerry Smith, Ruggiero, Gross, Franklin, MacDonald and Nappi.
Applicant was offered, but declined, an opportunity for additional oral argument.
The opinion in support of the decision being entered
today is not binding precedent of the Board.
Paper No. 50
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte WILLIBALD KRAUS
_______________
Appeal 2005-0841
Application 08/230,0831
Technology Center 2600
_______________
ORAL HEARING: April 7, 2005
_______________
Before: FLEMING, Chief Administrative Patent Judge, and GARRIS,
McQUADE, JERRY SMITH, NASE, RUGGIERO, GROSS, DELMENDO, FRANKLIN,
MacDONALD and NAPPI, Administrative Patent Judges.2
PER CURIAM
DECISION ON APPEAL UNDER 35 U.S.C. § 134
The examiner has rejected claims 14 and 16 of the reissue
application on appeal as being unpatentable under 35 U.S.C. 251
based on recapture. With respect to claim 14, a 6 to 5 majority
Appeal No. 2005-0055
Application 09/691,021
- 2 -
of the panel affirms the decision of the examiner. With respect
to claim 16, the panel unanimously affirms the decision of the
examiner.
A plurality opinion authored by Chief Judge Fleming, joined
by Judges Jerry Smith, MacDonald and Nappi, a concurring opinion
authored by Judge Gross, joined by Judge Ruggiero, an opinion
concurring-in-part and dissenting-in-part authored by Judge Nase,
joined by Judges Garris, Delmendo and Franklin, an opinion
concurring-in-part and dissenting-in-part authored by Judge
McQuade, Appendices 1 through 7 to Chief Judge Fleming’s opinion
and Appendices 8 through 10 to Judge Nase’s opinion, follow.
Chief Judge Fleming, with whom Judges Jerry Smith, MacDonald
and Nappi join, concurring.
DECISION ON APPEAL
A. Introduction
1. Applicant appeals from a final rejection entered
November 9, 1999.
2. The reissue application on appeal seeks to reissue
U.S. Patent 5,105,731 (the ‘731 patent), issued April 21, 1992,
based on application 07/642,475, filed January 17, 1991.
Appeal No. 2005-0841
Application No. 08/230,083
- 3 -
3. The reissue application contains claims 1-14 and 16.
4. Claims 14 and 16 have been rejected under
35 U.S.C. § 251 on the grounds that these claims seek to
recapture subject matter surrendered when the patent sought to be
reissued was granted.
5. Claims 1-13, the remaining claims, have been
indicated as being allowable.
6. The principal issue before the Board is whether
applicant has established that the examiner erred in rejecting
claims 14 and 16 based on recapture.
B. Findings of fact
The following findings of fact are believed to be supported
by a preponderance of the evidence.
The invention
1. The invention relates to a check valve device for
preventing reverse air flow in the ventilation duct leading to
the passenger space of a motor vehicle (the ‘731 patent at col.
1, lines 6-9).
2. The patent also refers to the "device" as an
"assembly."
3. The invention can be understood by reference to
Figures 1 through 11 of the drawings of the ‘731 patent, all of
which are reproduced in Appendix 1 of this opinion.
Appeal No. 2005-0841
Application No. 08/230,083
- 4 -
4. Fig. 1 is a cross-sectional view of the assembly 1
(col 2, lines 59-61).
5. With reference to Fig. 1, the assembly 1 comprises
a stable and relatively rigid outer housing 3 to which is
fastened (through at least one clamping device 18, 19) a thin and
somewhat more light-weight inner frame 4 (col. 3, lines 25-28).
6. Between the outer housing 3 and the inner frame 4,
there is check valve element 5 (col. 3, lines 29-31).
7. As shown in Fig. 1, two check valve elements 5 are
included in assembly 1.
8. In Fig. 1, the check valve elements 5 are shown in
a "closed" position (col. 3, lines 36-37).
9. When the check valve elements 5 are in a closed
position, they rest under their own weight under the force of
gravity against an oblique grid 11 formed on the outer housing 3
(col. 3, lines 37-39) and air cannot flow through the assembly 1.
10. When air enters the assembly, check valve elements
5 are deflected upwardly and lifted away from oblique grid 11 and
engage horizontally extending stays 9 of inner frame 4 (col. 3,
lines 39-44).
11. The patent indicates that air enters the assembly
"from the direction of the arrow" (col. 3, lines 40-41). No
arrow is apparent in the drawings, including Fig. 1.
Appeal No. 2005-0841
Application No. 08/230,083
3 In the Kraus patent, what we refer to as the "first" embodiment is
referred to as a "further embodiment" (col. 5, line 16).
- 5 -
Nevertheless, it is manifest that the "direction of the arrow" is
from left to right in Fig. 1.
12. Fig. 2 is a front view of inner frame 4 (col. 2,
lines 63-64).
13. With reference to Fig. 2, inner frame 4 has
peripheral rim 7 to which are connected transverse rib or web
members 8 (col. 3, lines 52-54).
14. With reference to Figs. 3 and 4, extending out
from ribs 8 are several stays or support elements 9 (col. 3,
lines 56-57).
15. As noted earlier, when check valves 5 are moved
into the open position, they are engaged with stays 9.
16. The stays 9 are adjoined to each other and
rigidified by a surrounding, generally continuous frame
element 10 (col. 3, lines 58-59).
17. Returning to Fig. 1, the assembly of the inner
frame 4, outer housing 3 and check valve elements 5 is fastened
to a support element 2 of a motor vehicle (not shown) by at least
one clip connection 6 on outer housing 3 (col. 3, lines 46-51).
18. According to what we will call a "first"
embodiment3 of the invention, the clip connection can include a
springy resilient tongue 22' (col. 5, lines 17-18).
Appeal No. 2005-0841
Application No. 08/230,083
- 6 -
19. With reference to Figs. 9, 10 and 11, there is
shown springy tongue 22' made separately as an independent piece
from outer housing 3 (col. 5, lines 16-19).
20. Springy tongue 22' is supported on locking
element 30 (Fig. 9) which can be connected to outer housing 3
(col. 5, lines 19-22).
21. Locking element 30 is guided in its movement
through a dove-tail guide 31 (Fig. 11) on the outer surface of
outer housing 3 in that part of the outer assembly identified as
wall 21 (Fig. 9) (col. 5, lines 21-25).
22. The patent also describes another embodiment,
which we will call a "second" embodiment, for a clip 6 without a
dove-tail guide having a springy tongue 22, all as shown in
detail in Figs. 6, 7 and 8 (col. 4, line 31 through col. 5,
line 15).
Prosecution history of the original application
23. As noted earlier, the patent sought to be reissued
was based on application 07/642,475, filed January 17, 1991
("original application").
24. As filed, the original application contained
claims 1-14 (reproduced in Appendix 2 of this opinion).
25. On May 17, 1991, the examiner entered a first
Office action.
Appeal No. 2005-0841
Application No. 08/230,083
- 7 -
26. Claims 1 and 3-11 were rejected on various
grounds.
27. Claims 3, 4 and 6-9 were rejected under the second
paragraph of 35 U.S.C. § 112 as being indefinite.
28. Claims 2 and 12-14 were "objected to" as being
dependent on a rejected claim.
29. Claims 1, 3-5 and 7-11 were rejected under
35 U.S.C. § 103 as being unpatentable over the following prior
art:
(1) Feles et al. (Feles), U.S. Patent 3,405,968
or
(2) Frien, U.S. Patent 4,781,106 in view of
(3) Mizusawa, U.S. Patent 4,691,623.
30. Feles, Frien and Mizusawa are prior art vis-à-vis
applicant under 35 U.S.C. § 102(b).
31. The examiner found that Feles and Frien describe
the claimed invention "substantially as claimed."
32. However, the examiner found that Feles and Frien
do not disclose the resilient clip connection.
33. The examiner further found that Mizusawa shows a
ventilator device for a vehicle.
34. With reference to col. 3, lines 39-48, of
Mizusawa, the examiner noted:
Appeal No. 2005-0841
Application No. 08/230,083
- 8 -
When the side wall 17 is inserted through the mounting
hole 27, the elastic pawl 23 and lock projection 24 of
the side wall 17 engage with the edges of the hole, and
the elastic pawl 23 is inwardly flexed as the side wall
proceeds through the hole. Eventually, the bent rear
end 27a of the door pillar defining the mounting hole
engages with the elastic pawl 23 and lock projection
24, thus securing the ventilator device 15 in the
mounting hole 27 of the door pillar P in co-operation
with the rear end of the grille 18.
35. The examiner held that it would have been obvious
to provide the flange of Feles or the front part of Frien with
the elastic pawl 23 in Mizusawa in order to provide ease of
mounting.
36. The examiner advised applicant that claims 2 and
12-14 would be allowable if written in independent form to
include all the limitations of the claims from which they depend.
37. In due course, applicant filed an amendment
responding to the examiner's first Office action.
38. The amendment:
(1) canceled claims 2 and 12;
(2) added new claims 15-16 and
(3) amended claims 3-11, 13 and 14,
all as shown in Appendix 3 of this opinion.
39. Following entry of the amendment, the application
claims were 1, 3-11 and 13-16.
40. In the amendment, applicant stated as follows
(emphasis added):
Appeal No. 2005-0841
Application No. 08/230,083
- 9 -
The Office Action of May 17, 1991 has been given
careful consideration. In view thereof, applicant has
canceled claims 2 and 12 from further consideration and
rewritten them in independent form as new claims 15 and
16. The remaining claims have been made dependent on
claims 15 or 16 and various minor corrections made
thereto.
The subject amendment was discussed in its current
form with. . .Examiner Joyce on September 10, 1991. At
that time, it was felt that all formal matters with
respect to the above claims had been corrected and that
the claims as now presented were patentable over all of
the prior art of record.
It is believed that this amendment places the
application in condition for allowance and early notice to
that effect is respectfully requested.
41. A telephonic interview took place on November 8,
1991.
42. During the interview, applicant agreed to cancel
claim 1 and amendments to claims 4 and 15 were agreed to, all as
shown in Appendix 4 of this opinion.
43. In dependent claim 4, "(13) of" was deleted.
44. In independent claim 15, "element" was inserted
after "valve".
45. The original application was then allowed.
46. Consistent with Office practice, the claims were
re-numbered in the course of preparing the original application
for issue, all as follows:
Appeal No. 2005-0841
Application No. 08/230,083
- 10 -
Chronological by original claim
Original claim number Claim as re-numbered
1 Canceled
2 Canceled
3 2
4 3
5 4
6 5
7 6
8 7
9 8
10 9
11 10
12 Canceled
13 12
14 13
15 1
16 11
Chronological by patent claim
Original claim number Claim as re-numbered
15 1
3 2
4 3
5 4
6 5
7 6
8 7
9 8
10 9
11 10
16 11
13 12
14 13
1 Canceled
2 Canceled
12 Canceled

Appeal No. 2005-0841
Application No. 08/230,083
- 11 -
47. U.S. Patent 5,105,731 issued April 21, 1992, based
on the original application and contained claims 1-13, all as
shown in Appendix 5 of this opinion.
Prosecution of reissue application
48. Applicant filed reissue application 08/230,083 on
April 20, 1994 seeking to reissue U.S. Patent 5,105,731.
49. Applicant presented original patent claims 1-13
along with new reissue application claims 14-16 for
consideration.
50. Reissue application claim 15 has been canceled and
is not involved in the appeal.
51. Reissue application claims 14 and 16 are before
the Board in the appeal.
52. A copy of reissue application claims 14 and 16
appears in Appendix 6 of this opinion.
53. The examiner has rejected reissue application
claims 14 and 16 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.
54. The Examiner based the rejection of claims 14 and
16 on the grounds that when faced in the original application
Appeal No. 2005-0841
Application No. 08/230,083
- 12 -
with a rejection under 35 U.S.C. § 103 over the Feles, Frien and
Mizusawa prior art patents, applicant made two significant
amendments:
(1) First, applicant presented new independent
application claim 15 which combined the limitations of
application dependent claim 2 with application independent
claim 1; new independent application claim 15 ultimately became
patent claim 1.
(2) Second, applicant presented new independent
application claim 16 which combined the limitations of
application dependent claims 10, 11 and 12 with application
independent claim 1; new original application claim 16 ultimately
became patent claim 11.
Examiner's rejection
55. The examiner rejected reissue application claims
14 and 16 as being unpatentable under 35 U.S.C. § 251 for
recapturing subject matter surrendered in obtaining allowance of
claims during prosecution of the application which matured into
the patent sought to be reissued.
56. The examiner reasoned as follows (see Supplemental
Examiner's Answer entered July 23, 2004, pages 2-3):
In the application for the patent now sought to be reissued,
originally filed dependent claims 2 (dependent on claim 1)
and 12 (dependent on claims 1, 10 and 11) were objected to,
Appeal No. 2005-0841
Application No. 08/230,083
- 13 -
and it was indicated in the first Office action that
the claims would be allowable if placed in an
independent format. The remainder of the claims were
rejected over prior art.
* * *
[T]he original independent claims, which were rejected
by the examiner based on prior art, did not contain:
Element E: a surrounding rim on the inner frame
carrying rib members spaced transversely with stays
extending therefrom and a surrounding frame joining the
stays [From original claim 2 of the original
application; claim 2 was objected to and found
patentable in the original application]
Element Z: wherein the locking element is guided over
a dovetail guide on the outer surface of the outer
housing [From original claim 12 of the original
application; claim 12 was objected to and found
patentable in the original application]
To overcome the prior art rejection against the claims not
having either [Element] E or [Element] Z, the applicants
[sic, applicant] rewrote those [rejected] claims to add
either [a] limitation [containing Element] E or limitation
[containing Element] Z, from the relevant dependent claims.
. . .
. . . [B]ecause the limitations ... represented as element E
or Z ... are absent from the reissue claims being rejected
... the claims impermissibly recapture what was previously
surrendered.
57. With respect to reissue application claim 14, the
examiner goes on to state (page 4):
Reissue claim 14 completely omits the ... limitation of
originally filed claim 2 (element E), and therefore,
impermissibly recaptures what was previously
surrendered. . . . [E]lement Z ... is also not made a part
of reissue claim 14. Thus, claim 14 contains neither
element E nor element Z.
Appeal No. 2005-0841
Application No. 08/230,083
- 14 -
58. With respect to reissue application claim 16, the
examiner states (page 4):
Reissue claim 16 omits the ... limitation of originally
filed claim 2 (element E), and therefore, impermissibly
recaptures what was previously surrendered.
* * *
Reissue claim 16 omits the ... limitation of originally
filed claim 12 (element Z), and therefore, impermissibly
recaptures what was previously surrendered.
59. The record supports the examiner's findings with
respect to what limitations do not appear in reissue application
claims 14 and 16 which were present in claims 2 and 12 of the
original application, as filed.
C. Discussion
1. Recapture principles
(1)
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 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
Appeal No. 2005-0841
Application No. 08/230,083
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).
- 15 -
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.), cert. denied, 525 U.S. 947 (1998).
(2)
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 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
Appeal No. 2005-0841
Application No. 08/230,083
- 16 -
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 by the
Federal Circuit, 131 F.3d at 1470, 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 in another aspect
completely unrelated to the rejection, the
recapture rule bars the claim;
Appeal No. 2005-0841
Application No. 08/230,083
- 17 -
(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.
(3)
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
Appeal No. 2005-0841
Application No. 08/230,083
- 18 -
at 1340, 75 USPQ2d at 1549. After a patent issued containing the
amended claims, North American Container filed a reissue
application seeking reissue claims 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 that "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.
Appeal No. 2005-0841
Application No. 08/230,083
- 19 -
Id. Thus, the Federal Circuit in North American Container
further developed the principles of 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.
(4)
Ex parte Eggert
Our 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, the 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 appellants 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
Appeal No. 2005-0841
Application No. 08/230,083
- 20 -
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 1717. 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 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);
Appeal No. 2005-0841
Application No. 08/230,083
- 21 -
(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.
(5)
What subject matter is surrendered?
In a case involving Substep (3)(a) of Clement, what is the
subject matter surrendered?
Is it
(1) the subject matter of an application claim which
was amended or canceled or
Appeal No. 2005-0841
Application No. 08/230,083
- 22 -
(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).
(6)
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 applicant's amendment was
"an admission 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
applicant 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
Appeal No. 2005-0841
Application No. 08/230,083
- 23 -
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 applicant'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 applicant 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
applicant 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.]
(7)
Allocation of burden of proof
What is the proper allocation of the burden of proof in
ex parte examination?
For reasons which 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 Clement.
For reasons which follow, we also hold that once a prima
facie case of recapture is established, the burden of persuasion
Appeal No. 2005-0841
Application No. 08/230,083
5 The reissue statute has been characterized as being remedial in
nature, based on fundamental principles of equity and fairness and should be
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.
- 24 -
then shifts to the applicant 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.
As will become apparent, our rationale parallels practice in
determining whether subject matter is surrendered when a doctrine
of equivalents analysis occurs in infringement cases.
(8)
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 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.
Appeal No. 2005-0841
Application No. 08/230,083
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.
- 25 -
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, 998
F.2d 1165, 1174, 26 USPQ2d 1018, 1025 (Fed. Cir. 1993).
See also Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
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., concurring-in-part
and dissenting-in-part):
[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.
(9)
Appeal No. 2005-0841
Application No. 08/230,083
- 26 -
Relevance of prosecution history
"Surrendered subject matter" is defined in connection with
prosecution history estoppel in Festo Corp. v. Shoketsu Kinzoku
Kogyo Kabushiki Co., 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 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,
Appeal No. 2005-0841
Application No. 08/230,083
- 27 -
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 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
Appeal No. 2005-0841
Application No. 08/230,083
- 28 -
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 applicants.
(10)
Admissible evidence in rebuttal showing
As in the case of surrender when applying the doctrine of
equivalents, a reissue applicant should have an opportunity to
rebut any prima facie case made by an examiner.
What evidence may an applicant 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 cannot attempt to divine, at this time, all
evidence which might be relevant. As with other issues which
come before the USPTO, such as obviousness and enablement, the
Appeal No. 2005-0841
Application No. 08/230,083
- 29 -
evidence to be presented will vary on a case-by-case basis, as
will the analysis of that evidence.
An applicant must show that at the time the amendment was
made, one skilled in the art could not reasonably have viewed the
subject matter broader than any narrowing amendment as having
been surrendered. The showing required to be made by applicant
is consistent with the public notice function of claims.
Nevertheless, some limited extrinsic evidence may be relevant.
However, extrinsic evidence unavailable to one of ordinary skill
in the art at the time of the amendment is not relevant to
showing that one skilled in the art 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., 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
Appeal No. 2005-0841
Application No. 08/230,083
- 30 -
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 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
Appeal No. 2005-0841
Application No. 08/230,083
- 31 -
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 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.
(11)
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.
Appeal No. 2005-0841
Application No. 08/230,083
- 32 -
Moreover, mixing "intervening rights" with "surrender" is like
mixing apples with oranges or 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.
(12)
The dissent
Our dissenting colleagues seem to be saying that the only
subject matter surrendered is that of a canceled claim. The
dissent's analysis looks a lot like an attempt to create a per se
rule.
With all due respect, 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, an applicant (not the public)
controls what amendments are presented during prosecution. When
an amendment is presented, it is the applicant that should be in
Appeal No. 2005-0841
Application No. 08/230,083
- 33 -
the best position to analyze what subject matter (i.e., territory
to use the Supreme Court's language) is being surrendered.
2. The examiner's prima facie case
Our findings of fact 55-58 set out the basis upon which the
examiner made a recapture rejection. As noted in Finding 58, the
examiner's findings are supported by the record.
Basically, in the application which matured into the patent
now sought to be reissued, the examiner "objected to" originally
filed dependent claims 2 (dependent on claim 1) and 12 (dependent
on claim 1 through dependent claims 10 and 11). Why? Because,
they depended from claims which were rejected over the prior art.
The examiner indicated in the first Office action, however, that
application claims 2 and 12 would be allowable if re-written in
independent form.
Applicant proceeded to re-write application claim 2 in
independent form by (1) canceling claim 2 and (2) adding
application claim 15 which contained all the limitations of
original application claims 1 and 2. Claim 15 issued as patent
claim 1.
Applicant also proceeded to re-write application claim 12 in
independent form by presenting application claim 16 which
combined the limitations of original application claims 1, 10, 11
and 12. Claim 16 issued as patent claim 11.
Appeal No. 2005-0841
Application No. 08/230,083
- 34 -
The apparatus of the original claims rejected by the
examiner based on prior art did not contain certain "elements"
which the examiner refers to as "Element E" and "Element Z":
Element E: a surrounding rim on the inner
frame carrying rib members spaced
transversely with stays extending therefrom
and a surrounding frame joining the stays--
found in original application claim 2, but
not original application claim 1.
Element Z: wherein the locking element is
guided over a dovetail guide on the outer
surface of the outer housing--found in
original application claim 12, but not
original application claims 1, 10 or 11.
Because the Element E or Z limitations are absent from
the reissue claims being rejected and since those
limitations are germane as to why the prior art did not
reach claims containing Elements E or Z, the examiner
has correctly placed the claims sought to be reissued
within Substep (3)(a) of Step (3) of Clement.
As the examiner accurately notes, with respect to
reissue application claim 14:
Reissue claim 14 completely omits the ...
limitation of originally filed claim 2
(element E), and therefore, impermissibly
recaptures what was previously surrendered
. . . . [E]lement Z ... is also not made a
part of reissue claim 14. Thus, claim 14
contains neither element E nor element Z.
[Supplemental Examiner’s Answer, page 4]
With respect to reissue application claim 16, the
examiner further accurately notes:
Reissue claim 16 omits the ... limitation of
originally filed claim 2 (element E), and
Appeal No. 2005-0841
Application No. 08/230,083
7 There is some possibility on this record that applicant might have
presented an argument that the examiner's reasoning at pages 2-4 of the first
Supplemental Examiner's Answer, mailed July 23, 2004, is in effect a "new ground
of rejection." It also might have been argued that such a new ground of
rejection was not in compliance with the rules in effect at the time the first
Supplemental Examiner's Answer was mailed in July of 2004. Additionally, there
is some possibility on this record that applicant might have argued that the
second Supplemental Examiner's Answer, mailed November 8, 2004, which
incorporated earlier answers (and the statement of the rejection made in those
earlier answers) was not in compliance with the rules in effect at the time it
was mailed in November of 2004. See 37 CFR § 41.43(a)(2) (2005), which became
effective on September 13, 2004. Notice of Final Rule, Practice Before the Board
of Patent Appeals and Interferences, 69 Fed. Reg. 49660 (Aug. 12, 2004),
reprinted in 1286 Off. Gaz. Pat. & Tm. Office 21 (Sep. 7, 2004). In the Reply
Briefs, filed September 28, 2004 and January 10, 2005, applicant did not make any
of these arguments or note any procedural objection to the manner in which the
examiner procedurally presented the examiner's position on appeal. Accordingly,
applicant has waived any procedural error which might have occurred in the manner
in which the examiner handled the appeal.
- 35 -
therefore, impermissibly recaptures what was
previously surrendered.
* * *
Reissue claim 16 omits the ... limitation of
originally filed claim 12 (element Z), and
therefore, impermissibly recaptures what was
previously surrendered. [Supplemental
Examiner’s Answer, page 4]
The examiner's accurate factual analysis demonstrates that
the examiner has made out a prima facie case of recapture.7
3. Applicant's response to the examiner’s case
(1) First argument
Applicant argues at pages 7-13 of the Appeal Brief filed
October 4, 2000 that (matter in brackets added):
Applicant is not removing limitations that
caused claim 1 in the original application to
be patented. Rather, as noted above,
independent claim 1 of the original
Appeal No. 2005-0841
Application No. 08/230,083
- 36 -
application was never itself patented or
amended in any way to become patented.
Instead, original claims 2 and 12-14 contain
allowable subject matter as filed. The
Examiner therefore merely objected to those
claims in the Office Action mailed May 17,
1991, and indicated those claims as being
allowable if rewritten in independent form to
include all of the limitations of the base
claim and any intervening claims. In
response to the initial Office Action of May
17, 1991, applicant canceled original
allowable claims 2 and 12 and rewrote them
into independent form as new claims 15 and
16, respectively.
Essentially, applicant never amended
independent claim 1 in the original
application in order to secure allowance
thereof. Rather, applicant merely canceled
the rejected claims [, including rejected
claim 1,] and rewrote the allowable claims
into independent form to include all of the
limitations of the base claim and any
intervening claims.
. . . .
[Thus,] applicant respectfully submits
that the broader aspects of reissue claim 14,
namely the absence of the limitation of
"wherein the inner frame 4 has a surrounding
rim 7 carrying rib members 8 spaced
transversely with stays 9 extending therefrom
and a surrounding frame 10 joining the stays
9" does not relate in any way to any subject
matter that could fairly be considered to be
"surrendered" during prosecution.
. . . .
Further, applicant respectfully submits
that reissue claim 14 is broader than the
canceled or amended claim only in an aspect
unrelated and not germane to the rejection in
that the reissue claim 14 does not include
the limitation of "the inner frame 4 has a
surrounding rim 7 carrying rib members 8
spaced transversely with stays 9 extending
Appeal No. 2005-0841
Application No. 08/230,083
- 37 -
therefrom and a surrounding frame 10 joining
the stays 9." The inner frame, rim and rib
member limitations were not germane to the
prior art rejection. . . . .
Applicant repeats the gist of the argument in subsequent
briefs.
The ultimate point which we understand applicant to be
trying to make is that at the time of the amendment one skilled
in the art could not reasonably have viewed any subject matter as
having been surrendered because application claim 1 was never
amended. We disagree.
The "amendment" filed September 12, 1991, requesting
cancellation of claim 2 and the addition of claim 15 (and the
later cancellation of claim 1) is an amendment within the meaning
of the application rules. See 37 CFR § 1.119 (1991), which
provides that "claims may be amended by canceling particular
claims, by presenting new claims, or by rewriting particular
claims as indicated in §1.121." The addition of claim 15 was
"presenting new claims." The amendment is an amendment which can
result in subsequent application of the recapture rule.
Applicant's argument asks us to distinguish between
(1) an action incorporating the limitations of a
second claim (claim 2 in this case) into a first
claim (claim 1 in this case) and
Appeal No. 2005-0841
Application No. 08/230,083
- 38 -
(2) canceling first and second claims (claims 1 and 2
in this case) and replacing both with a third
claim (claim 15 in this case) combining all
limitations of the first and second claims.
Apart from the rules which govern practice in patent cases
before the USPTO, applicant's argument would appear to be
foreclosed by In re Byers, 230 F.2d 451, 455, 109 USPQ 53, 55
(CCPA 1956) ("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."). Byers is entirely consistent with the Federal
Circuit's in 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 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:
Appeal No. 2005-0841
Application No. 08/230,083
- 39 -
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).
Appeal No. 2005-0841
Application No. 08/230,083
- 40 -
With respect to reissue claim 16, applicant presents an
analogous argument, at pages 15-20 of the Appeal Brief filed
October 4, 2000. The argument related to reissue claim 16, the
gist of which is restated in subsequent briefs, is not persuasive
for the reasons assigned to reissue claim 14.
There is an additional reason why applicant's argument is
not persuasive with respect to reissue claim 14. Applicant's
argument addresses only how the amendment added the subject
matter of original patent application claim 2 to rejected claim 1
to create new claim 15 (claim 1 of the patent). No argument has
been made for patent claims 2-4 and 6-10, all of which were
narrowed by the same amendment in response to the examiner's
rejection. Patent claims 2-4 and 6-10 correspond to original
patent application claims 3-5 and 7-11, none of which included
the subject matter of original patent application claim 2.
Applicant's amendment filed September 12, 1991, amended each of
original patent application claims 3-5 and 7-11 (by their
dependency from amended application claim 15) to add the subject
matter of original patent application claim 2. Applicant
has not satisfactorily explained why at the time of the amendment
one skilled in the art would not reasonably have viewed the
subject matter broader than the narrowing amendment to original
application claims 3-5 and 7-11 as having been surrendered.
Appeal No. 2005-0841
Application No. 08/230,083
- 41 -
Applicant's first argument has not rebutted the presumption,
upon which the examiner's rejection is based, that at the time of
the amendment one skilled in the art would reasonably have viewed
the subject matter of the narrowing amendment as having been
surrendered.
(2) Second argument
Applicant, at pages 7-15 of the Reply Brief filed
September 28, 2004, argues:
The analysis in Eggert is consistent with
... [applicant's] set out on page 6 of the
Appeal Brief of July 10, 2000 that "the only
subject matter that could be considered to
have been 'surrendered' by applicant in the
original prosecution could only have been the
scope of independent claim 1 as originally
filed."
In applicant's view, Eggert holds that only the rejected
claim (in this case, only a canceled originally filed claim) can
be viewed as having been surrendered. Effectively, applicant
invites us to establish and apply a per se rule said to be based
on Eggert. We decline the invitation. Insofar as Eggert might
be read as establishing a per se rule, North American Container
has now undermined the three-step framework analysis used in
Eggert. Furthermore, we noted, "the USPTO has been admonished
for trying to extract per se rules from generalized commentary
found in cases. See, e.g., In re Ochiai, 71 F.3d 1565, 1572, 37
USPQ2d 1127, 1133 (Fed. Cir. 1995)." 67 USPQ2d at 1727.
Appeal No. 2005-0841
Application No. 08/230,083
- 42 -
An argument that only the subject matter of a rejected claim
can be viewed as surrendered territory appears to be inconsistent
with sound public policy made apparent by binding Supreme Court
and Federal Circuit precedent. Rather than applying a per se
rule, we believe that the proper inquiry requires a factual
analysis on a case-by-case basis to determine whether the
patentee is attempting to recapture by reissue subject matter
surrendered during the prosecution of the patent application.
The only fact-specific analysis we find in the briefs before us
appears in applicant's first argument--which, as noted above, did
not convince us that the examiner had erred.
Based on the premise that the surrendered subject matter can
only be the subject matter of a rejected claim, applicant
proceeds to apply an erroneous test under Clement to reach an
incorrect conclusion that reissue claim 14 does not violate the
recapture rule. Applicant's analysis, based on a flawed
premise, has not convinced us that at the time of the amendment
one skilled in the art would reasonably have viewed the subject
matter broader than the narrowing amendment as not having been
surrendered.
With respect to reissue claim 16, applicant presents an
analogous argument. See pages 15-19 of the Reply Brief filed
Appeal No. 2005-0841
Application No. 08/230,083
- 43 -
September 28, 2004. The argument directed to reissue claim 16 is
no more persuasive than the unpersuasive argument directed to
reissue claim 14.
(3) Other arguments
We have considered all other arguments made by applicant in
the Appeal Brief and subsequent Briefs. None has convinced us
that the examiner erred in rejecting reissue claims 14 and 16
based on recapture.
D. Decision
Upon consideration of the record, and for the reasons given,
the decision of the examiner rejecting reissue claims 14 and 16
based on recapture is affirmed.
E. Options for further proceedings
1. We recognize that our opinion (1) might be viewed
as discussing points not previously brought out in the record and
(2) citing Federal Circuit opinions based on Federal Circuit
decisions entered after applicant filed the appeal.
2. We also recognize that the appeal involves a
reissue application which has been pending for some time. Cf.
Pritchard v. Loughlin, 361 F.2d 483, 487, 149 USPQ 841, 844 (CCPA
Appeal No. 2005-0841
Application No. 08/230,083
- 44 -
1966) (proceedings involving reissue should be handled
expeditiously inasmuch as term of reissue patent is running).
3. Accordingly, in an attempt to minimize any
prejudice to applicant, we exercise our discretion by authorizing
applicant to proceed under any one of the following options, the
choice of the option being up to applicant.
(1) Option 1: Applicant can accept our decision
as final, in which case the appeal would be concluded.
(2) Option 2: Within two (2) months of the date
of this decision, applicant may file a request for rehearing.
37 CFR § 41.52(a)(1) (2005).
(3) Option 3: Applicant may treat this decision
as a non-final decision (i.e., an interlocutory order), in which
case within two (2) months of the date of this decision applicant
is invited to file a brief responding to any points discussed in
our opinion. 37 CFR § 41.50(d) (2005). The brief may rely (1)
on the record, as it exists at this time, and (2) any public
document not in the record at the present time, provided the
document was available to the public at the time an amendment was
made in the application which matured into the patent sought to
be reissued. Copies of any document relied upon which is not
already of record must be supplied with any brief. If applicant
be so advised, the brief may also discuss whether, and how, what
Appeal No. 2005-0841
Application No. 08/230,083
- 45 -
we have referred to as a "first" and "second" embodiment
(Findings 18-22) falls within the scope of (1) reissue
application claims 14 and 16 versus (2) the patented claims.
(4) Option 4: Applicant may file a single paper
which combines Option 2 and Option 3.
(5) Option 5: Applicant may treat our decision
as a final decision and seek judicial review within the time set
out in 37 CFR § 1.304(a)(1) (2005).
4. No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a) (2005).
AFFIRMED

MICHAEL R. FLEMING, Chief )
Administrative Patent Judge )
)
)
)
JERRY SMITH )
Administrative Patent Judge ) BOARD OF PATENT
)
) APPEALS AND
)
ALLEN R. MacDONALD ) INTERFERENCES
Administrative Patent Judge )
)
)
)
ROBERT NAPPI )
Administrative Patent Judge )
)
Appeal No. 2005-0841
Application No. 08/230,083
-46-
Judge Gross, with whom Judge Ruggiero joins, concurring.
We concur in the result reached by the plurality but we
disagree with the plurality's analysis. Specifically, we
disagree with the plurality's presumption that subject matter
broader than the patented claims has been surrendered and that
appellant holds the burden to rebut that presumption.
The plurality states (Opinion, page 27) that "[t]he 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." However, in proceedings in which the
doctrine of equivalents is at issue (such as infringement), the
public has only the prosecution history upon which to rely and
has no reason to believe that such reliance is misplaced. On the
other hand, the mere filing of a reissue application puts the
public on notice not to rely upon the prosecution history, as the
overall prosecution history may change. Further, the purpose of
reissue is to allow an applicant to correct errors, which have
been defined as including claiming less than they had a right to
claim (i.e., allowing applicant to broaden claims). Although
Appeal No. 2005-0841
Application No. 08/230,083
-47-
there are limits on such broadening, such as a two year time
period in which to file a broadening reissue and the recapture
principle, a presumption of surrender and especially a burden on
the applicant to rebut that presumption appears to us to be in
conflict with the purpose of reissue. Accordingly, we would
affirm the examiner's rejection but for the reasons given infra.

PERTINENT CASE LAW
In Ball Corp. v. United States, 729 F.2d 1429, 221 USPQ 289
(Fed. Cir. 1984), the Federal Circuit stated that "[t]he
recapture rule bars the patentee from acquiring, through reissue,
claims that are of the same or of broader scope than those claims
that were canceled from the original application." Id. at 1436,
221 USPQ at 295. We note that the language used by the Federal
Circuit did not limit the bar to "only" those claims that were
canceled from the original application. The Federal Circuit
continued that "the patentee is free to acquire, through reissue,
claims that are narrower in scope than the canceled claims," but
recognized that "[t]he subject matter of the claims is not alone
controlling." Id. In other words, merely being narrower in
scope than the canceled claims may not be sufficient to overcome
the recapture bar. In fact, in analyzing the facts in Ball, the
Appeal No. 2005-0841
Application No. 08/230,083
-48-
Federal Circuit held that the reissue claims were narrower in
scope than the canceled claims with respect to the same
limitation relied upon to overcome a prior art rejection made in
the prosecution of the original application. Thus, although not
explicitly stated in Ball, there is a suggestion from the
analysis therein that the narrowing to overcome the recapture bar
should relate to the same limitation relied upon to overcome the
prior art rejection.
Mentor Corp. v. Coloplast Inc., 998 F.2d 992, 27 USPQ2d 1521
(Fed. Cir. 1993), affirmed the suggestion that surrendered
subject matter equates to that which does not include the
limitation added to overcome a prior art rejection.
Specifically, the Federal Circuit stated, "Coloplast correctly
argues that reissue claim 6, which does not include the adhesive
transfer limitation [which was added and argued to overcome the
prior art rejection], impermissibly recaptures what Mentor
deliberately surrendered in the original prosecution." Id. at
996, 27 USPQ2d at 1525. The Federal Circuit then determined
whether a narrowing of the claims had occurred that was "material
in relation to the impermissible broadening," Id. at 996, 27
USPQ2d at 1526, or, rather, in relation to the omission of the
limitation added for patentability.
Appeal No. 2005-0841
Application No. 08/230,083
-49-
In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir.
1997), relying heavily on the analysis in Ball and Mentor,
developed a three step test for determining whether the claims of
a reissue application recapture surrendered subject matter. The
first step is "to determine whether and in what 'aspect' the
reissue claims are broader than the patent claims." Clement at
1468, 45 USPQ2d at 1164. The Federal Circuit looked at the
individual limitations that have been broadened, stating that "a
reissue claim that deletes a limitation or element from the
patent claims is broader in that limitation's aspect." Id.
The second step of the test is "to determine whether the
broader aspects of the reissue claims relate to surrendered
subject matter." Id. at 1468-69, 45 USPQ2d at 1164. The Federal
Circuit looked to the prosecution history, focusing on arguments
and amendments made to overcome prior art rejections, stating
that "[d]eliberately canceling or amending a claim in an effort
to overcome a reference strongly suggests that the applicant
admits that the scope of the claim before cancellation or
amendment is unpatentable." Id. at 1469, 45 USPQ2d at 1164.
Thus, the scope of the claim prior to cancellation or amendment
is generally considered to be surrendered subject matter. In
fact, in setting up the third step, the Federal Circuit refers to
the applicant as having "surrendered the subject matter of the
Appeal No. 2005-0841
Application No. 08/230,083
8 We note that the term "amended" generally refers to a claim after an
amendment has been entered. Thus, "canceled or amended" could refer to the claim
prior to or subsequent to amendment. As the amended claim would equate to the
patented claim, thereby rendering the patented claim surrendered, the normal
reading of the term "amended" would seem to be inappropriate. Thus, we will
focus on the "canceled claim," recognizing that the phrase "canceled or amended"
includes something more.
-50-
canceled or amended claim,8 . . . ." Id. However, later in the
decision, in analyzing the facts of the case, the Federal Circuit
determined that eliminating limitations that had been added to
overcome prior art rejections rendered the reissue claims broader
"in a manner directly pertinent to the subject matter that
Clement surrendered throughout the prosecution." Id. at 1471,
45 USPQ2d at 1166. In other words, the Federal Circuit appears
to include as "surrendered subject matter" more than merely the
canceled claims; the phrase also encompasses something pertaining
to the limitation added in the original prosecution to overcome a
prior art rejection.
If the broadening is found to relate to surrendered subject
matter, the third and final step of the test is to "determine
whether the surrendered subject matter has crept into the reissue
claim." Id. at 1469, 45 USPQ2d at 1164. In other words, viewing
surrendered subject matter as including more than merely the
finally rejected claim, the third step is to determine whether
the claims have been narrowed in the same aspects, or with
Appeal No. 2005-0841
Application No. 08/230,083
-51-
respect to the same limitations, that prompted a finding of
surrendered subject matter.
By analyzing the reasoning in Mentor and Ball, the Federal
Circuit arrived at the following principles as an approach to the
third step:
(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; (2) if it is narrower in
all aspects, the recapture rule does not apply, but
other rejections are possible; (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 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.
Clement at 1470, 45 USPQ2d at 1165. The third step of the test
in Clement compares the reissue claims to the canceled claims,
i.e., the claims of the patented application (upon which the
reissue is based) prior to the amendment that resulted in the
patent. We note that the test uses the phrase "canceled or
amended," which as indicated supra, we assume includes something
more than the canceled claim. Again we will focus on the
"canceled" claim only, as the alternative language appears to be
cumulative in our interpretation of the test.
Appeal No. 2005-0841
Application No. 08/230,083
-52-
According to the principles set forth by the Federal
Circuit, if the reissue claims are as broad in all aspects as
the claims prior to the amendment, then the recapture rule bars
the claims. As stated supra, the addition of a limitation to
overcome a prior art rejection suggests an admission that the
scope of the claim prior to the amendment is unpatentable.
Therefore, if all limitations of the reissue claim are at least
as broad as the claim prior to the amendment, then the recapture
rule bars the claim. Additionally, if the reissue claim is at
least as broad in an aspect related to a prior art rejection
(i.e., the limitation added to overcome the reference), even if
narrower in an aspect unrelated to the prior art rejection, then
the recapture rule bars the claims. In other words, completely
eliminating a limitation added to overcome a prior art rejection,
even if accompanied by a narrowing in another area, is barred by
the recapture rule.
However, if the reissue claims are narrower in all aspects
(including the limitation added to overcome the reference) or in
an aspect related to a prior art rejection (i.e., with regard to
the limitation added to overcome the reference), even if broader
in other areas, then the recapture rule does not apply. Thus, a
narrowing of the claim in the area of the limitation that
Appeal No. 2005-0841
Application No. 08/230,083
-53-
overcame the prior art rejection, regardless of the scope of the
remaining limitations, avoids a bar by the recapture rule. To
summarize, a limitation added to overcome a prior art rejection
cannot be eliminated completely in a reissue claim unless it is
offset by a corresponding narrowing in the same area.
In Hester Industries Inc. v. Stein Inc., 142 F.3d 1472,
46 USPQ2d 1641 (Fed. Cir.), cert. denied, 525 U.S. 947 (1998),
the patentee eliminated completely, in a reissue application,
two limitations of the original claims that were argued as
distinguishing the claims over the prior art. The Federal
Circuit analyzed the prosecution history of the original patent
and determined that Williams, the inventor of Hester's patent,
had argued that "each of these limitations was 'critical' with
regard to patentability," that those arguments "constitute[d] an
admission by Williams that these limitations were necessary to
overcome the prior art," and that "Williams, through his
admission . . . surrendered claim scope that does not include
these limitations." Id. at 1482, 46 USPQ2d at 1649. The Federal
Circuit stated, "We share the district court's discomfort with
Williams' attempt to remove, through reissue, the 'solely with
steam' and 'two sources of steam' limitations after having relied
so heavily on those limitations to obtain allowance of the
original patent claims over the prior art," referencing the
Appeal No. 2005-0841
Application No. 08/230,083
9 Although the Federal Circuit referred to other respects in this quote
from Mentor, later in its opinion the Federal Circuit indicated that the other
respects must relate to the limitation that was broadened. Mentor at 996, 27
USPQ2d at 1525. Further, the Federal Circuit in Clement indicated in step three
of the test that they too interpreted other respects as relating to the
limitation that was broadened. See step 3(a) of the Clement test. Clement at
1470, 45 USPQ2d at 1166.
-54-
recapture rule discussed in Clement at 1468, 45 USPQ2d at 1164.
Hester at 1480, 46 USPQ2d at 1647.
After determining that the reissue claims in Hester did
include surrendered subject matter, the Federal Circuit
recognized that "the recapture rule may be avoided in some
circumstances." Id. at 1482, 46 USPQ2d at 1649. Therefore, the
Federal Circuit continued its analysis by determining "whether
the reissue claims were materially narrowed in other respects.
See, e.g., Mentor, 998 F.2d at 996, 27 USPQ2d at 1525 ('Reissue
claims that are broader in certain respects and narrower in
others9 may avoid the effect of the recapture rule.'); Clement,
131 F.3d at 1470, 45 USPQ2d at 1165." Hester at 1482, 46 USPQ2d
at 1649. The Federal Circuit found that the alleged narrowing
aspects were not overlooked during the prosecution of the
original patent and, therefore, that the case was not one "which
involve[d] the addition of material limitations that overcome the
recapture rule." Id. at 1483, 46 USPQ2d at 1650.
Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d
1597 (Fed. Cir. 2001) revisited reissue recapture. In an
Appeal No. 2005-0841
Application No. 08/230,083
-55-
application for patent, Pannu argued a distinction of "a
continuous substantially circular arc having a diameter greater
than the diameter of the lens body . . . which significantly
enhance the easy insertibility of applicant's lens and
significantly reduce any possibility of snagging delicate eye
tissue" over the prior art. In the ensuing reissue application,
Pannu eliminated that limitation from the claims, but further
limited the size and position of the snag resistant means. The
Federal Circuit stated:
The addition of the 'continuous, substantially circular
arc' limitation . . . and the statements made by Pannu
to the examiner during prosecution of the '855 patent
limited the claim to exclude an interpretation that did
not include a continuous, substantially circular arc.
See Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d
1570, 1576, 34 USPQ2d 1673, 1676 (1995). The shape of
the haptics was broadened during reissue and was the
same subject matter that was surrendered during
prosecution.
Pannu at 1371, 59 USPQ2d at 1600.
As to the narrowing aspects of the reissue claims, the
Federal Circuit held that since the narrowing was related to the
positioning and dimensions of the snag resistant means rather
than to the shape of the haptics, "the reissued claims were not
narrowed in any material respect compared with their broadening."
Id. at 1372, 59 USPQ2d at 1601. The Federal Circuit concluded
that "[i]n prosecuting the '855 patent, Pannu specifically
Appeal No. 2005-0841
Application No. 08/230,083
-56-
limited the shape of the haptics to a 'continuous, substantially
circular arc.' On reissue, he is estopped from attempting to
recapture the precise limitation he added to overcome prior art
rejections." Id.
In Ex parte Eggert, 67 USPQ2d 1716 (Bd. Pat. App. & Int.
2003), a precedential Board decision entered May 29, 2003, the
majority opinion stated, "In 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 appellants conceded was unpatentable."
Id. at 1717. The majority further stated 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.
However, it acknowledged that the Federal Circuit has 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." Id. at 1729.
In analyzing the facts of the case, the majority in Eggert
found that the reissue claims were broader than the patent claims
in several respects including that they omitted the limitation
"said retaining member being generally bowl-shaped and convex
toward said magnet," which defined the shape of the retaining
member and which had been added to overcome a prior art
Appeal No. 2005-0841
Application No. 08/230,083
-57-
rejection. Id. at 1731. Accordingly, it further determined that
the omission of that limitation in the reissue claims was a
broadening in an aspect germane to the prior art rejection. It
also found that the finally rejected claim prior to the amendment
that resulted in the issuance of the patent was surrendered
subject matter. Id.
In applying the third step of the Clement test, determining
whether the surrendered subject matter had crept back into the
reissue claim, the majority opinion looked at the new limitation
of reissue claim 15 that limited the shape of the retaining
member to "substantially covering said outer surface of said
magnet" and the new limitation of reissue claim 22 that limited
the shape of the retaining member to "having a continuous outer
periphery such that any two points on the periphery can be joined
by a straight line segment which does not extend outside the
periphery." The majority ascertained that the reissue claims
were "narrower than the surrendered subject matter in an aspect
germane to the prior art rejection (i.e., the shape of the
retaining member) and broader only in aspects unrelated to the
rejection." Eggert at 1731. It held that the facts of the case
fell into category 3(b) of the principles set forth in Clement,
and, therefore, that the claims were not barred by the recapture
Appeal No. 2005-0841
Application No. 08/230,083
10 We note that although the Eggert majority repeatedly stated that it
viewed the finally rejected claim as the surrendered subject matter, the analysis
of the facts focused on whether the limitation omitted had been added in the
prosecution of the original application to overcome a prior art rejection and
whether the narrowing limitations on reissue related to the same subject matter
as the limitation omitted. Thus, despite statements in Eggert that could be
considered inconsistent with our interpretation of the relevant case law, there
is no inconsistency between our interpretation and the holding in Eggert as it
applies to the particular facts.
-58-
rule. While one can disagree with the Eggert majority as to what
is meant by "surrendered subject matter," the result in Eggert is
consistent with our reading of the case law prior to Eggert,
i.e., Mentor, Clement, Hester, and Pannu, as discussed supra.10
The Federal Circuit was faced once again with the issue of
reissue recapture in North American Container, Inc. v. Plastipak
Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005).
During the prosecution of an application for patent, the examiner
rejected the claims over a combination of two references,
Dechenne and Jakobsen. To overcome the rejection, the applicant
limited the claims by specifying that the shape of the inner
walls was generally convex. The applicant 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 re-entrant portion is clearly concave in its entirety."
Id. at 1340, 75 USPQ2d at 1549. After a patent issued on the
amended claims, the applicant filed a reissue application
Appeal No. 2005-0841
Application No. 08/230,083
-59-
including claims in which the language "inner wall portions are
generally convex" was eliminated, but 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 to some of
the claims.
The Federal Circuit applied the three step test of Clement.
The Federal Circuit found 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.'" Id. at 1350,
75 USPQ2d at 1557. Further, the broadened aspect (i.e., the
broadened limitation) "relate[d] to subject matter that was
surrendered during prosecution of the original-filed claims."
Id. However, the Federal Circuit found that "the reissue claims
were not narrowed with respect to the 'inner wall' limitation,
thus avoiding the recapture rule." Id. 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 the
applicant's deletion of the 'generally convex' limitation clearly
broadened the 'inner wall' limitation." Id.
It is important to note that the Federal Circuit determined
that the re-entrant portion (the element further narrowed in the
Appeal No. 2005-0841
Application No. 08/230,083
-60-
reissue claims) was part of the inner wall. Thus, the limitation
added in the reissue claims (regarding the re-entrant portion)
did in fact further limit the inner wall. Accordingly, by
"'inner wall' limitation," we believe that the Federal Circuit
meant the particular limitation that was broadened (that the
inner wall was generally convex) in the reissue claims, not any
limitation relating to the inner wall. Thus, the Federal Circuit
in North American Container further clarified that "narrower in
an aspect germane to a prior art rejection" in the Clement test
means narrower with respect to the specific limitation added for
patentability in the original prosecution and eliminated in the
reissue claims.
In Eggert, the limitation added for patentability was "said
retaining member being generally bowl-shaped and convex toward
said magnet," whereas the narrowing was "substantially covering
said outer surface of said magnet" or "having a continuous outer
periphery such that any two points on the periphery can be joined
by a straight line segment which does not extend outside the
periphery." Id. at 1731. Since North American Container was
decided after Eggert, and neither narrowing limitation in Eggert
further limited the specific limitation added for patentability,
Eggert is no longer consistent with the rationale of the Federal
Appeal No. 2005-0841
Application No. 08/230,083
-61-
Circuit. Thus, we agree with the plurality opinion that Eggert
should no longer be followed.
To summarize, to determine if there has been a recapture of
surrendered subject matter, we apply the three step analysis set
forth in Clement. There is disagreement as to whether or not the
phrase "surrendered subject matter" includes more than merely the
rejected claim prior to the amendment that overcame the prior art
rejection, i.e., something relating to the added limitation. In
viewing Clement in a vacuum, even if it could be argued that
Clement would support multiple interpretations, as indicated
supra, both Mentor and cases decided since Clement suggest that
the Federal Circuit did, in fact, mean to include as surrendered
subject matter any claim that lacks a limitation directed to the
specific subject matter added in the original prosecution to
overcome a prior art rejection. Thus, the proper interpretation
of the applicable and binding case law is that surrendered
subject matter includes any claim that lacks a limitation
directed to the specific subject matter that was added to
overcome a prior art rejection.
Appeal No. 2005-0841
Application No. 08/230,083
-62-
APPLICATION OF THE RECAPTURE DOCTRINE TO CLAIM 14
Applying the test set forth in Clement, we first "determine
whether and in what 'aspect' the reissue claim[] . . . [is]
broader than the patent claims." Id. at 1468, 45 USPQ2d at 1164.
We note that independent patent claims 1 and 11 include different
limitations that were considered to be allowable over the prior
art. Therefore, we must separately compare reissue claim 14 to
the closest patent claim that depends from claim 1 and also the
closest patent claim that depends from claim 11. Patent claims 9
and 11 have the most limitations in common with reissue claim 14
without including many additional limitations. Claim 14 is
broader than patent claim 9 in that the limitation "wherein the
inner frame (4) has a surrounding rim (7) carrying rib members
(8) spaced transversely with stays (9) extending therefrom and a
surrounding frame (10) joining the stays (9)," hereafter referred
to as the inner frame limitation, has been deleted. Also, the
springy tongue is not recited as being "separate from the outer
housing (3)." Similarly, claim 14 is broader than patent claim
11 in that the limitation that the springy tongue (22') is
"formed separate from the outer housing (3), said springy tongue
(22') being arranged on a locking element (30) which can be
connected with the outer housing (3), and said locking element
Appeal No. 2005-0841
Application No. 08/230,083
11 Reissue claim 14 also differs from both patent claim 9 and also patent
claim 11 in that the limitation "[i]n a check valve assembly in association with
the ventilation system for the passenger space of a motor vehicle" has been
changed to "[a] check valve assembly adaptable for use with a ventilation system
for a passenger space of a motor vehicle," but we consider this alteration
neither a broadening nor a material narrowing.
-63-
(30) being guided over a dovetail guide (31) on the outer surface
of the outer housing (3)" has been deleted.11
The second step of the Clement test, as discussed supra, is
"to determine whether the broader aspects of the reissue claims
relate to surrendered subject matter." Id. at 1468-69, 45 USPQ2d
at 1164. The prosecution history of Application 07/642,475 set
forth above establishes that the examiner indicated that the
above-noted inner frame limitation was allowable over the prior
art. In response, appellant added the inner frame limitation to
rejected claim 1 to overcome the prior art rejection. The
examiner also indicated that the limitation "wherein the locking
element (30) is guided over a dovetail guide (31) on the outer
surface of the outer housing (3)," hereafter referred to as the
dovetail guide limitation, was allowable over the prior art. In
response, appellant added the dovetail guide limitation to
rejected claim 11 to overcome the prior art rejection. Since
reissue claim 14 includes neither the inner frame limitation nor
the dovetail guide limitation, the limitations that had been
added to overcome a prior art rejection, the reissue claim
Appeal No. 2005-0841
Application No. 08/230,083
-64-
is broader "in a manner directly pertinent to the subject matter
. . . surrendered throughout the prosecution." Id. at 1471,
45 USPQ2d at 1166.
The last step is to determine whether the surrendered
subject matter has crept into the rejected reissue claim. In
what aspects, if any, is the reissue claim narrower than the
canceled, or rejected, claim.
Claim 14 is narrower than original patent application
claim 10 (which corresponds to patent claim 9) in that it
includes "[a] second clip connection comprising a second springy
tongue integral with the surrounding wall" and the first springy
tongue is "spaced from the wall." These limitations do not
relate to either the inner frame limitation or the dovetail guide
limitation. In other words, each narrowing limitation is "an[]
aspect completely unrelated to the rejection," Id. at 1470, 45
USPQ2d at 1165, in that it does not narrow the claim regarding
the specific subject matter of either the inner frame or the
dovetail guide. Thus, since claim 14 is as broad as original
patent application claim 10 in an aspect germane to a prior art
rejection (i.e., the limitation added to overcome the reference),
by including neither the inner frame limitation nor the dovetail
guide limitation, and narrower than original patent application
Appeal No. 2005-0841
Application No. 08/230,083
-65-
claim 10 in another aspect, according to principle (3)(a) of
Clement, the recapture rule bars the claim.
Comparing claim 14 to original patent application claim 11,
we reach the same conclusion. Specifically, claim 14 is broader
than original patent application claim 10 at least in an aspect
germane to a prior art rejection (i.e., the limitation added to
overcome the reference), by failing to include either the inner
frame limitation or the dovetail guide limitation, but also
narrower than original patent application claim 11 in other
aspects, a second springy tongue and the first springy tongue
being spaced from the wall. Each narrowing limitation is "an[]
aspect completely unrelated to the rejection," Id., in that it
does not narrow the claim regarding the specific subject matter
of either the inner frame or the dovetail guide. Therefore,
comparing reissue claim 14 to original patent application claim
11, according to principle (3)(a) of Clement, the recapture rule
bars the claim.
For the reasons set forth above, the decision of the
examiner rejecting reissue claim 14 under 35 U.S.C. § 251 should
be affirmed.
Appeal No. 2005-0841
Application No. 08/230,083
12 Reissue claim 16 also differs from both patent claim 10 and also patent
claim 11 in that the limitation "[i]n a check valve assembly in association with
the ventilation system for the passenger space of a motor vehicle" has been
changed to "[a] check valve assembly adaptable for use with a ventilation system
for a passenger space of a motor vehicle." This alteration is neither a
broadening nor a material narrowing.
-66-
APPLICATION OF THE RECAPTURE DOCTRINE TO CLAIM 16
Applying the test set forth in Clement, we first "determine
whether and in what 'aspect' the reissue claim[] . . . [is]
broader than the patent claims." Id. at 1468, 45 USPQ2d at 1164.
Since claim 16 recites a locking element, patent claims 10 and 11
are the closest to reissue claim 16. Claim 16 is broader than
patent claim 10 in that the inner frame limitation, as well as
"wherein the clip connection (6) comprises a springy tongue
(22')," have been deleted. In addition, claim 16 is broader than
patent claim 11 in that the limitation "wherein the clip
connection (6) comprises a springy tongue (22') . . . arranged on
a locking element (30) . . . said locking element (30) being
guided over a dovetail guide (31) on the outer surface of the
outer housing (3)" has been deleted.12
The second step of the Clement test, as discussed supra, is
"to determine whether the broader aspects of the reissue claims
relate to surrendered subject matter." Id. at 1468-69, 45 USPQ2d
at 1164. As explained supra, the prosecution history of
Application 07/642,475 set forth above establishes that the
Appeal No. 2005-0841
Application No. 08/230,083
-67-
examiner indicated that the above-noted inner frame and dovetail
guide limitations were allowable over the prior art. In
response, appellant added the inner frame limitation to rejected
claim 1 and the dovetail guide limitation to rejected claim 11 to
overcome the prior art rejection. Since reissue claim 16
includes neither the inner frame limitation nor the dovetail
guide limitation, the limitations that had been added to overcome
a prior art rejection, the reissue claim is broader "in a manner
directly pertinent to the subject matter . . . surrendered
throughout the prosecution." Id. at 1471, 45 USPQ2d at 1166.
The last step is to determine whether the surrendered
subject matter has crept into the rejected reissue claim. In
what aspects, if any, is the reissue claim narrower than the
canceled, or rejected, claim?
As discussed supra, claim 16 is as broad as original patent
application claim 11 in an aspect germane to a prior art
rejection (i.e., the limitation added to overcome the reference),
by not including either the inner frame limitation or the
dovetail guide limitation. Claim 16 is not narrower than
original patent application claim 11 in any respects. Thus,
comparing reissue claim 16 to original patent application
claim 11, claim 16 is "as broad as or broader than the canceled
or amended claim in all aspects." Therefore, according to
Appeal No. 2005-0841
Application No. 08/230,083
-68-
principle (1) of Clement, 131 F.3d at 1470, 45 USPQ2d at 1165,
the recapture rule bars the claim.
Appellant incorrectly argues that claim 16 has been narrowed
relative to the surrendered subject of original patent
application claim 11 in that it includes the limitation of "the
clip connection securing the outer housing to the locking element
and joining the inner frame, the outer housing, and the check
valve element to the motor vehicle." Original patent application
claim 1 included the limitation that "the assembled unit
comprising the inner frame (4), the outer housing (3), and the
check valve element (3) [sic, (5)] is joined to a support (2) of
the motor vehicle through a resilient clip connection (6) carried
on the outer housing (3)." Original patent application claim 10,
which depended from claim 1, included the limitation "wherein the
clip connection (6) comprises a springy tongue (22') formed
separate from the outer housing (3)" and original patent
application claim 11, dependent from claim 10, included the
limitation "wherein the springy tongue (22') is arranged on a
locking element (30) which can be connected with the outer
housing (3)." These limitations of original patent application
claims 1, 10 and 11 fully correspond to the above-quoted argued
limitation of claim 16.
Appeal No. 2005-0841
Application No. 08/230,083
-69-
For the reasons set forth above, the decision of the
examiner rejecting claim 16 under 35 U.S.C. § 251 should be
affirmed.
AFFIRMED
JOSEPH F. RUGGIERO )
Administrative Patent Judge ) BOARD OF PATENT
)
) APPEALS
)
ANITA PELLMAN GROSS ) AND
Administrative Patent Judge )
) INTERFERENCES
)
Appeal No. 2005-0841
Application No. 08/230,083
13 35 U.S.C. § 251, ¶ 1, provides 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 . . . 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.
35 U.S.C. § 251, ¶ 4, provides:
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.
-70-
Judge Nase, with whom Judges Garris, Delmendo and Franklin
join, concurring-in-part and dissenting-in-part.
We concur with the decision of the majority (set forth in the
plurality and concurring opinions) to affirm the rejection of claim
16 under 35 U.S.C. § 251 albeit based on a different analysis. We
dissent from the decision of the majority to affirm the rejection
of claim 14 under 35 U.S.C. § 251. In our view, the decision of
the examiner to reject claim 14 under 35 U.S.C. § 251 should be
reversed.
OVERVIEW OF OUR POSITION REGARDING CLAIM 14
The majority's affirmance of the claim 14 rejection is in
conflict with the provisions of 35 U.S.C. § 25113 which grant a
Appeal No. 2005-0841
Application No. 08/230,083
14 35 U.S.C. § 252, ¶ 2, provides:
A reissued patent shall not abridge or affect the right of any person or that
person's successors in business who, prior to the grant of a reissue, made,
purchased, offered to sell, or used within the United States, or imported into
the United States, anything patented by the reissued patent, to continue the use
of, to offer to sell, or to sell to others to be used, offered for sale, or sold,
the specific thing so made, purchased, offered for sale, used, or imported unless
the making, using, offering for sale, or selling of such thing infringes a valid
claim of the reissued patent which was in the original patent. The court before
which such matter is in question may provide for the continued manufacture, use,
offer for sale, or sale of the thing made, purchased, offered for sale, used, or
imported as specified, or for the manufacture, use, offer for sale, or sale in
the United States of which substantial preparation was made before the grant of
the reissue, and the court may also provide for the continued practice of any
process patented by the reissue that is practiced, or for the practice of which
substantial preparation was made, before the grant of the reissue, to the extent
and under such terms as the court deems equitable for the protection of
investments made or business commenced before the grant of the reissue.
-71-
reissue applicant the right to enlarged claim scope while
providing intervening rights to the public under 35 U.S.C. § 252.14
The majority's affirmance of the claim 14 rejection is based
on the belief that claim 14 recaptures surrendered subject matter
by omitting the original dependent claim 2 limitation which had
been added to original parent independent claim 1 in order to avoid
prior art and thereby obtain patent claim 1. This original claim 2
limitation relates to a surrounding rim with stays which is
disclosed as a "further embodiment" of patentee's invention, (e.g.,
see lines 3-10 in column 2 of the patent).
Significantly, the patent also discloses other embodiments of
the invention which involve various clip connection arrangements
(e.g., see the paragraph bridging columns 1 and 2 as well as lines
37-52 in column 2) including the first and second resilient clip
connections defined by claim 14 (as well as the alternative clip
connection embodiment of patent claim 11). It appears to be the
Appeal No. 2005-0841
Application No. 08/230,083
-72-
plurality's and concurrence's position that the embodiment of first
and second resilient clip connections defined by claim 14 has been
surrendered and therefore cannot now be claimed by reissue except
in combination with the surrounding rim embodiment defined by
original dependent claim 2 and by patent claim 1. The merit of
this position is questionable for a number of reasons.
First, the now claimed embodiment of first and second
resilient clip connections cannot have been surrendered by patentee
because this embodiment had never before been claimed by patentee.
Not one of the original or amended claims presented by patentee in
his original patent application was ever directed to the particular
embodiment now defined by appealed claim 14. We perceive no
convincing rationale in support of the plurality's and
concurrence's view that patentee has surrendered an embodiment
which had never been claimed (and therefore never argued). To the
contrary, this failure to claim an embodiment, which has been
expressly disclosed as part of the invention and which patentably
distinguishes over the prior art, is the very type of error 35
U.S.C. § 251 is meant to allow or permit to be corrected.
Second, as previously indicated, the majority apparently
believes that the claim 14 embodiment of first and second resilient
clip connections would avoid recapture and thus be allowable only
if combined with the surrounding rim embodiment of original claim 2
and patent claim 1. This belief presupposes that the two
embodiments are compatible. In this case, such a presupposition is
Appeal No. 2005-0841
Application No. 08/230,083
-73-
correct in our view. Nevertheless, we see nothing in the
plurality's or concurrence's opinions which suggests that their
decision to affirm the claim 14 rejection would be any different
even if the aforementioned embodiments were incompatible. Under
this circumstance, it would be impossible for a patentee to ever
obtain reissue patent protection for an invention embodiment which
had been erroneously never claimed during prosecution of the
original application. Such an outcome would violate a reissue
applicant's statutory rights including the right to enlarged claim
scope.
Third, the majority's determination, that patentee has
surrendered subject matter which does not include the surrounding
rim embodiment of original claim 2 and patent claim 1, is directly
contrary to intrinsic record evidence in the form of patent claim
11. This is because patent claim 11, which is directed to an
alternative clip connection embodiment, unquestionably does not
contain any limitations specific to the surrounding rim embodiment.
From our perspective, this undisputed fact by itself clearly
invalidates any merit the majority's determination might otherwise
seem to possess.
In summary, we believe that any one of the above discussed
reasons taken alone is adequate to reveal that the majority has
impermissibly denied the appellant his right under 35 U.S.C. § 251
to enlarged claim scope as defined by claim 14. These reasons
Appeal No. 2005-0841
Application No. 08/230,083
15 For example, surrender may also occur via an admission made in the
body of the specification or via an asserted claim distinction with respect to
nonapplied prior art cited in an Information Disclosure Statement.
-74-
taken together emphasize the error of the majority's decision to
affirm the claim 14 rejection.
In our view, the basic error in the majority's affirmance
stems from the failure to appreciate that a determination of
surrendered subject matter is a fact dependent analysis based on
evidence. As reflected by the decisional authority cited below,
surrendered subject matter may be evinced by a variety of factual
circumstances. For example, evidence of surrendered subject matter
may be in the form of a claim alone as it existed prior to
cancellation and/or amendment. In re Byers, 230 F.2d 451, 455, 109
USPQ 53, 55 (CCPA 1956). Additionally, surrender may be evinced by
such a claim in combination with argument. In re Clement, 131 F.3d
1464, 1470, 45 USPQ2d 1161, 1165-66 (Fed. Cir. 1997). Surrender
also may be evinced by argument alone. Hester Industries, Inc. v.
Stein Inc., 142 F.3d 1472, 1480, 46 USPQ2d 1641, 1648 (Fed. Cir.
1998). Other types of surrendered subject matter evidence are
conceivable.15
In the case before us, it is undisputed that, during
prosecution of the original application, the examiner's prior art
rejections were avoided, sans argument, by cancelling the sole
independent original claim 1 and rewriting the examiner-denominated
allowable subject matter of dependent claim 2 (as well as dependent
Appeal No. 2005-0841
Application No. 08/230,083
-75-
claim 12) into independent claim form. The majority has cited no
authority which directly supports the proposition that, under such
a factual circumstance, it is appropriate to define subject matter
which has been surrendered by referring to subject matter which has
been patented. The only authority, which supports referring to
patented subject matter as defining surrender, is limited to the
factual circumstance wherein surrender is evinced by argument
concerning a limitation of the patent claim. Hester, id. However,
even under that scenario, the surrendered subject matter is the
patent claim sans the argued limitation.
No argument is present in this case. Thus, the record of this
appeal contains no evidence specifically sanctioned by decisional
authority which supports the majority's determination that claim 14
recaptures surrendered subject matter because it is not limited to
the surrounding rim embodiment of original dependent claim 2 and
independent patent claim 1. On the other hand, the majority's
determination is contradictory to the intrinsic record evidence of
patent claim 11 which indisputably is not limited to this
surrounding rim embodiment.
In light of the foregoing, we consider the majority decision
as to claim 14 as conflicting with binding precedent which we are
obliged to follow and as conflicting with a reissue applicant's
35 U.S.C. § 251 right to enlarged claim scope which we are obliged
to implement.
Appeal No. 2005-0841
Application No. 08/230,083
-76-
RECAPTURE UNDER 35 U.S.C. § 251
The reissue statute expressly permits a patentee to obtain
reissue claims broader than the originally issued claims at any
time within two years from the date the original patent issues.
35 U.S.C. § 251. The scope of permissible broadened reissue claims
is limited by a judicial doctrine known as the "recapture rule."
The "recapture rule" was developed to prohibit a patentee from
obtaining by reissue broadened claims that "recapture" subject
matter the patentee "deliberately surrendered" during the course of
the original prosecution to obtain the patent. When an applicant
cancels or amends a claim to overcome a prior art rejection, and
then relies on the changes made to the claim in arguing
patentability of the amended claim, the law infers that the patent
applicant admits that the prior art forecloses the scope of the
original claim. As a result of this inferred admission,
competitors are free to practice the subject matter surrendered by
the patentee through the cancellation or amendment. To preserve
the public notice function of the file history, the "recapture
rule" precludes the patentee from recanting the admission that the
prior art precluded a certain breadth of claim scope.
BURDEN OF PROOF
We agree with the plurality that an examiner has the burden of
making out a prima facie case of recapture. However, we believe
that the examiner makes out the prima facie case of recapture by
Appeal No. 2005-0841
Application No. 08/230,083
-77-
establishing: (1) the scope of the surrendered subject matter; and
(2) that the surrendered subject matter has crept into a reissue
claim.
Once a prima facie case of recapture is established, the
burden of persuasion then shifts to the applicant to establish that
the rejected claim sought to be reissued does not recapture
surrendered subject matter.
THE PRECEDENT
The seminal Federal Circuit case regarding the "recapture
rule" is Clement which is set forth in pertinent part at
Appendix 7.
The Federal Circuit in Clement set forth an analytical process
for determining if the recapture rule should be applied against
claims in a reissue application. However, to properly understand
that analytical process one must first understand the cases that
proceeded Clement which are analyzed in Appendix 8.
How the analytical process set forth in Clement was applied in
the Clement case itself and in subsequent cases is set forth in
Appendix 9.
WHAT SUBJECT MATTER WAS SURRENDERED?
The question in this appeal is what subject matter was
surrendered?
Appeal No. 2005-0841
Application No. 08/230,083
16 See Leggett v. Avery, 101 U.S. 256, 259-60 (1879); Dobson v. Lees,
137 U.S. 258, 265-66 (1890); Byers, 230 F.2d at 455-56, 109 USPQ at 55-56; In re
Willingham, 282 F.2d 353, 356-57, 127 USPQ 211, 215-16 (CCPA 1960); In re
Wesseler, 367 F.2d 838, 151 USPQ 339 (CCPA 1966); In re Richman, 409 F.2d 269,
161 USPQ 359 (CCPA 1969); In re Wadlinger, 496 F.2d 1200, 1207-08, 181 USPQ 826,
832 (CCPA 1974); Ball Corporation v. United States, 729 F.2d 1429, 1435-36, 221
USPQ 289, 293-95 (Fed. Cir. 1984); Whittaker Corp. v. UNR Industries Inc., 911
F.2d 709, 713, 15 USPQ2d 1742, 1745 (Fed. Cir. 1990); Mentor Corp. v. Coloplast,
Inc., 998 F.2d 992, 995, 27 USPQ2d 1521, 1524 (Fed. Cir. 1993); and Clement,
131 F.3d at 1468-70, 45 USPQ2d at 1163-65.
-78-
Is it
(1) the subject matter of original patent application
claims 1, 3-5 and 7-11 or
(2) the subject matter of original patent application
claims 1, 3-5 and 7-11 and, on a limitation-by-limitation basis,
the territory falling between the scope of
(a) original patent application claims 1, 3-5 and 7-11
and
(b) original patent application claims 2 and 12.
For the reasons which follow, we believe that it is (1) while the
majority believes it is (2).
In the context of recapture under 35 U.S.C. § 251, surrendered
subject matter has been determined by the Supreme Court, the
Federal Circuit, or the Court of Customs and Patent Appeals (CCPA)
to be either (1) the rejected claim deliberately canceled or
amended in an effort to overcome a prior art rejection (which
strongly suggests that the applicant admits that the scope of the
claim before the cancellation or amendment is unpatentable);16 or
(2) the argued claim minus the argued limitations when surrender
Appeal No. 2005-0841
Application No. 08/230,083
17 See Hester.
18 See footnote 15.
19 The brightness being "at least 59 ISO in the final pulp" is one of
the limitations added to claim 42 that led to the allowance of that claim.
-79-
occurs through arguments alone.17 This may not be an exhaustive
list since other types of surrendered subject matter evidence are
conceivable.18 However, we are aware of no 35 U.S.C. § 251
recapture case in which the Supreme Court, the Federal Circuit,
the CCPA or the Court of Claims determined that surrendered subject
matter includes both the subject matter of a rejected claim that
is subsequently amended into allowable form and, on a
limitation-by-limitation basis, the territory falling between the
scope of the rejected claim and the amended allowable claim.
It is our view that, in this appeal, the prosecution history
of Application No. 07/642,475 set forth in the plurality opinion
establishes only each of original patent application claims 1, 3-5
and 7-11 as surrendered subject matter since the appellant either
canceled or amended each of those claims in order to overcome a
prior art rejection.
Our view is consistent with recent Federal Circuit decisions
Our view is clearly consistent with Clement which compared
reissue claim 49 with claim 42 before the amendments thereto which
made claim 42 allowable. The court found that claim 49 was
narrower in one area, namely, the brightness being "at least 59 ISO
in the final pulp."19 The court found that this narrowing related
Appeal No. 2005-0841
Application No. 08/230,083
-80-
to a prior art rejection because, during the prosecution of the
'179 patent, Clement added this brightness limitation in an effort
to overcome a prior art rejection. The court's comparison also
revealed that reissue claim 49 was broader than claim 42 before the
amendments thereto which made claim 42 allowable in that it
eliminates the room temperature and specific energy limitations of
step (a), and the temperature, specific energy, and pH values of
steps (c) and (d). The court found that this broadening directly
related to several prior art rejections because, in an effort to
overcome the applied prior art Clement added to step (a) the
limitation that it is carried out "at room temperature," and
applies "specific mechanical energy lower than 50 KW.H/Ton to form
a pumpable slurry." On balance, the court held that reissue claim
49 was broader than it was narrower in a manner directly pertinent
to the subject matter that Clement surrendered throughout the
prosecution and accordingly the court affirmed the board's decision
to sustain the examiner's rejection of claim 49 under 35 U.S.C.
§ 251 based on the recapture rule.
Our view is consistent with Pannu v. Storz Instruments Inc.,
258 F.3d 1366, 1370-71, 59 USPQ2d 1597, 1600 (Fed. Cir. 2001). In
Pannu the court stated that "[o]n reissue, [Pannu] is estopped from
attempting to recapture the precise limitation he added to overcome
prior art rejections." 258 F.3d at 1372, 59 USPQ2d at 1601. This
statement may, when viewed in complete isolation, appear to provide
Appeal No. 2005-0841
Application No. 08/230,083
-81-
limited support for the majority's rationale in this appeal. In
our view, this statement means only what it says, that is, Pannu is
estopped from attempting to recapture the precise limitation he
added to overcome prior art rejections. We decline to extract from
the above-quoted language in Pannu a generalized rule that a
reissue claim which omits a limitation relied upon during
prosecution of the patent application is per se impermissible under
the recapture rule, regardless of whether the claim has been
materially narrowed in other respects compared to the surrendered
subject matter. Rather, the proper inquiry requires a fact-
specific analysis in each case to determine whether the patentee is
attempting to recapture by reissue subject matter that was
surrendered during the prosecution of the patent application. In
Pannu, reissue claim 1 was broader than the surrendered subject
matter in an aspect germane to the prior art rejection.
Specifically, the addition of limitations to later added claim 16
and statements made by Pannu limited claim 16 to exclude an
interpretation that did not include a continuous, substantially
circular arc. However, claim 16 with the limitation "a continuous,
substantially circular arc" constitutes surrendered subject matter
in Pannu due to the later examiner's amendments to claim 16 setting
forth structural details of the haptics. The Federal Circuit
determined that the deletion of the "continuous, substantially
circular arc" limitation resulted in the shape of the haptics being
Appeal No. 2005-0841
Application No. 08/230,083
-82-
broadened during reissue and that this was the same subject matter
that was surrendered during prosecution. The reissue claims were
also narrower than both claim 16 in the patent application prior to
the examiner’s amendments and patent claim 1, in that the reissue
claims changed the recitation that the length of the haptics was
"substantially greater" than the width of the haptics to "at least
three times greater" than the width of the haptics and added the
limitation that the snag resistant means must be "substantially
coplanar" with the haptics. The Federal Circuit then balanced the
broadening of the surrendered subject matter against the narrowing
of the surrendered subject matter and concluded that "the reissued
claims were not narrowed in any material aspect compared with their
broadening." Pannu, 258 F.3d at 1372, 59 USPQ2d at 1601. As such,
Pannu was estopped from attempting to recapture the precise
limitation he added (i.e., the "continuous, substantially circular
arc" limitation) to overcome prior art rejections. The Federal
Circuit added that "[f]urthermore, ‘if the patentee is seeking to
recover subject matter that had been surrendered during the initial
prosecution this flexibility of analysis is eliminated, for the
prosecution history establishes the substantiality of the change
and estops its recapture.’ Anderson v. Int’l Eng’g & Mfg., Inc.,
160 F.3d 1345, 1349, 48 USPQ2d 1631, 1634 (Fed. Cir. 1998)."
Pannu, 258 F.3d at 1372, 59 USPQ2d at 1601. We understand this
language, consistent with the prior precedent of the Federal
Appeal No. 2005-0841
Application No. 08/230,083
-83-
Circuit, to mean that, where a patentee is seeking to recover in a
reissue claim subject matter broader than that surrendered during
prosecution, the mere presence of narrowing limitations in the
reissue claim is not necessarily sufficient to save the reissue
claim from the recapture rule.
Our view is consistent with North American Container, Inc. v.
Plastipak Packaging, Inc., et al., 415 F.3d 1335, 1349-50, 75
USPQ2d 1545, 1556-57 (Fed. Cir. 2005). The prosecution history of
U.S. Patent 5,072,841 ("the ’841 patent"), which issued from
Application 07/577,799, a file-wrapper-continuation of Application
07/112,607 ("the ’607 application") was as follows. The ’607
application was filed with claims 1-14. The first office action
(mailed 5/25/1989) in the ’607 application rejected claims 1-3 and
8-12 as obvious over U.S. Patent 4,231,483 to Dechenne in view of
U.S. Patent 4,467,929 to Jakobsen. Claims 4-7, 13 and 14 were
objected to as improper dependent claims. An amendment was filed
August 28, 1989 in the ’607 application canceling claims 1-14 and
adding claims 15-41. This amendment included the limitation that
the shape of the inner walls was "generally convex" in each
independent claim. A final rejection was mailed December 7, 1989
in the ’607 application rejecting claims 15, 17-19, 24, 26-28, 33,
35, 37 and 39 under 35 U.S.C. § 103. The ’799 application was then
filed with a pre-amendment canceling claims 15-41 and adding claims
42-68. This amendment maintained the limitation that the shape of
Appeal No. 2005-0841
Application No. 08/230,083
20 131 F.3d at 1470, 45 USPQ2d at 1165.
-84-
the inner walls was "generally convex" in each independent claim
while adding new limitations to each independent claim in an
attempt to overcome the 35 U.S.C. § 103 rejection made in the final
rejection in the ’607 application. Claims 42-68 in the ’799
application were allowed in a Quayle action mailed on February 16,
1991. Claims 42, 43, 45, 48, 51, 52, 54-57, 59 and 60 in the ’799
application were further amended on April 16, 1991 and new
dependent claim 69 was added. Claims 42-69 in the ’799 application
were allowed on June 27, 1991 and issued in the ’841 patent as
claims 1-28.
In our view, the above prosecution history of the ’841 patent
establishes finally rejected claims 15, 17-19, 24, 26-28, 33, 35,
37 and 39 in the '607 application containing the limitation that
the shape of the inner walls was "generally convex" to be
surrendered subject matter. Thus, the removal of the limitation
that the shape of the inner walls was "generally convex" results in
a claim that is broader than the surrendered subject matter in an
aspect germane to a prior art rejection. As such, the reissue
claims in North American Container were subject to a recapture
rejection, having fallen into principle 3 of Clement20 wherein the
reissue claims are broader than the surrendered subject matter in
some aspects, but narrower than the surrendered subject matter in
others, thus requiring the broadening aspects of the reissue claims
Appeal No. 2005-0841
Application No. 08/230,083
-85-
to be balanced against the narrowing aspects of the reissue claims
to determine if the recapture rule bars the claims. Since the
Federal Circuit has never set forth any fact pattern where a
reissue claim falling into principle 3 of Clement which is broader
than the surrendered subject matter in an aspect germane to a prior
art rejection avoids the recapture rule, North American Container
is, in our view, an example of how the Federal Circuit balances the
broadening aspects of a reissue claim against the narrowing aspects
of the reissue claim to determine if the recapture rule bars the
claim. The Federal Circuit found in North American Container that
(1) the reissue claims are broader in scope than the
originally-issued claims in that they no longer require the "inner
walls" to be "generally convex"; (2) the broader aspect of the
reissue claims relates to subject matter that was surrendered
during prosecution of the originally-filed claims; (3) the reissue
claims were not narrowed sufficiently to avoid the recapture rule;
and (4) the reissue claims were invalid for violating the rule
against recapture.
Fatal flaw in majority decision
The fatal flaw in the majority decision is that they adopt an
interpretation of the phrase "surrendered subject matter" as used
in the context of recapture under 35 U.S.C. § 251 unsupported by
the case law. The plurality and concurring opinions view the
phrase "surrendered subject matter" as applied to the facts of this
Appeal No. 2005-0841
Application No. 08/230,083
21 See Byers, 230 F.2d at 456-57, 109 USPQ at 56-57 and Clement, 131
F.3d at 1471-72, 45 USPQ2d at 1166. These cases support the proposition that in
applying the "recapture rule" the focus is on the narrowest of the cancelled
claims not the broadest cancelled claim. In Ball, 729 F.2d at 1432, 221 USPQ at
291, the court stated that "[d]ependent claims 8 and 9 are the only claims of the
original application critical to this appeal."
-86-
case as including both (1) the rejected claim prior to the
amendment attempting to overcome a prior art rejection (i.e., the
limitations of original claims 1, 3-5 and 7-11), and (2) any claim
that lacks a limitation directed to subject matter added to
overcome a prior art rejection (i.e., the limitations of original
claims 2 and 12). In our view, the "surrendered subject matter" in
this case is only original patent application claims 1, 3-5 and
7-11 since the appellant either canceled or amended each of those
claims in order to overcome a prior art rejection. Thus, each of
original patent application claims 1, 3-5 and 7-11 correspond to
distinct and separate "surrendered subject matter."21
The following simplified example highlights the difference
between the majority's interpretation of the phrase "surrendered
subject matter" and our interpretation of the phrase "surrendered
subject matter." The original application is filed with claim 1 to
ABC (like original claim 1 from Application No. 07/642,475) and
dependent claim 2 adding limitation D to claim 1 (like original
claim 2 from Application No. 07/642,475). Claim 1 is rejected as
being unpatentable over reference X while claim 2 is objected to as
depending from a non-allowed claim. In response to that rejection,
the applicant cancels claims 1 and 2 and presents new claim 3 to
Appeal No. 2005-0841
Application No. 08/230,083
22 Limitation E is a totally distinct and separate limitation from
limitation D.
-87-
ABCD (like added claim 15 from Application No. 07/642,475). The
examiner allows claim 3 and a patent issues with one claim to ABCD.
Within two years of the issuance of that patent, the applicant
files a reissue application adding a claim to ABCE. In the
prosecution of the reissue claim to ABCE, no prior art rejection is
made and it is clear that limitation E22 is not taught or suggested
by reference X. The majority would consider the claim to ABCE to
be barred by the "recapture rule" since that claim lacks the
limitation directed to the subject matter added to overcome a prior
art rejection (i.e., limitation D). We consider the claim to ABCE
to avoid the "recapture rule" since that claim is narrower in scope
than the surrendered subject matter (i.e., the claim to ABC) in all
aspects (i.e., that claim has not been broadened in any aspect
relative to the surrendered subject matter of ABC and has been
amended to be narrower than the surrendered subject matter of ABC
in at least one aspect by the addition of limitation E). The
majority's interpretation, we believe, is contrary to precedent
Appeal No. 2005-0841
Application No. 08/230,083
23 Under Standard Operating Procedure 2 (Revision 6) (August 10, 2005),
the following are considered precedent binding upon the Board:
1. An opinion of the Supreme Court.
2. An en banc decision of the Court of Appeals for the Federal
Circuit.
3. A decision of the Court of Appeals for the Federal Circuit, or
its predecessors, the Court of Customs and Patent Appeals (CCPA) and the
Court of Claims, which the Court of Appeals for the Federal Circuit
considers binding precedent.
4. An opinion of the Board made precedential by the procedures
contained in this or earlier versions of Standard Operating Procedure 2.
Standard Operating Procedure 2 can be found at
http://www.uspto.gov/web/offices/dcom/bpai/sop2.pdf.
24 See also UMC Elec. Co. v. United States, 816 F.2d 647, 652 n. 6, 2
USPQ2d 1465, 1468 n. 6 (Fed. Cir. 1987); United States v. Rush, 804 F.2d 645, 647
(Fed. Cir. 1986); Gindes v. United States, 740 F.2d 947, 949-50 (Fed. Cir. 1984);
Mother's Restaurant, Inc. v. Mama's Pizza, Inc., 723 F.2d 1566, 1569, 221 USPQ
394, 397 (Fed. Cir. 1983).
-88-
binding on this Board.23 See, for example, Willingham, Wesseler,
Richman, Wadlinger, Ball, Whittaker and Clement discussed in
Appendixes 7 and 8.
In its first decision, South Corp. v. United States, 690 F.2d
1368, 1370 & n.2, 215 USPQ 657, 657-58 & n.2 (Fed. Cir. 1982), the
Federal Circuit dealt unequivocally with the matter of binding
precedent. Sitting, en banc, the court held that it would adhere
to the body of law that existed in its predecessor courts, the
United States Court of Claims and the United States Court of
Customs and Patent Appeals (CCPA), as of September 30, 1982.
Overruling such precedent, or resolving a conflict between the two
predecessors, would require en banc consideration.24 The Federal
Circuit has faithfully observed the rule of South. Even where it
is possible that a prior decision of the CCPA would be decided
Appeal No. 2005-0841
Application No. 08/230,083
25 In re Durden, 763 F.2d 1406, 1410, 226 USPQ 359, 361 (Fed. Cir.
1985). See also Larry Harmon Pictures Corp. v. Williams Rest. Corp., 929 F.2d
662, 666, 18 USPQ2d 1292, 1295 (Fed. Cir. 1991). The Federal Circuit has
recognized that later CCPA decisions could resolve precedential inconsistencies
sub silento; later CCPA decisions would control because that court always sat en
banc. In re Gosteli, 872 F.2d 1008, 1011, 10 USPQ2d 1614, 1616 (Fed. Cir. 1989).
26 Dynamics Corp. v. United States, 766 F.2d 518, 520, 226 USPQ 622, 623
(Fed. Cir. 1985).
27 Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 765, 9 USPQ2d 1417, 1423
(Fed. Cir. 1988). Decisions of a three-judge panel cannot overturn prior
precedential decisions of the court. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). A reversal of such a holding would
have to be through an en banc proceeding in the Federal Circuit, Supreme Court
review, or a change in the patent statute by Congress. Jacobs Wind Elec. Co. v.
Florida Dep't of Transp., 919 F.2d 726, 728, 16 USPQ2d 1972, 1973-74 (Fed. Cir.
1990).
-89-
differently today, it still stands as binding precedent until
overruled.25 On the other hand, what may have been traditional
practice is not, without a clear holding of one of the Federal
Circuit's predecessors, binding upon it.26 The Federal Circuit has
adopted the rule that prior decisions of a panel of the court are
binding precedent on subsequent panels unless and until overturned
en banc. Where there is direct conflict, the earliest decision
controls.27 We believe it is the burden of the majority to
establish that their new interpretation of "surrendered subject
matter" is consistent with the decisions in Willingham, Wesseler,
Richman, Wadlinger and Whittaker. This, they have not done.
SUMMARY OF THE RECAPTURE RULE
In our opinion, the Federal Circuit has set forth the
following analytical process for determining if the recapture rule
should be applied against claims in a reissue application.
Appeal No. 2005-0841
Application No. 08/230,083
-90-
The first step in applying the recapture rule is to determine
whether and in what "aspect" the reissue claims are broader than
the patent claims.
The second step is to determine whether the broader aspects of
the reissue claims relate to surrendered subject matter. Thus, one
looks to the prosecution history for arguments and changes to the
claims made in an effort to overcome a prior art rejection to
determine what surrendered subject matter exists, if any. If no
surrendered subject matter exists, then the "recapture rule" does
not apply. If surrendered subject matter exists, it must then be
determined whether the surrendered subject matter has crept into
the reissue claims. Accordingly, the reissue claim must be
compared with the surrendered subject matter. If the scope of the
reissue claim is as broad as or broader than the surrendered
subject matter in all aspects (i.e., a claim that has not been
narrowed in any aspect relative to the surrendered subject matter),
then the recapture rule bars the claim. In contrast, a reissue
claim narrower in scope than the surrendered subject matter in all
aspects (i.e., a claim that has not been broadened in any aspect
relative to the surrendered subject matter and has been amended to
be narrower than the surrendered subject matter in at least one
aspect) escapes the recapture rule entirely. However, if the
reissue claim is broader than the surrendered subject matter in
some aspects, but narrower than the surrendered subject matter in
Appeal No. 2005-0841
Application No. 08/230,083
28 See Clement; Mentor; Ball; Pannu., 258 F.3d at 1370-71, 59 USPQ2d at
1600; North American Container, 415 F.3d at 1349-50, 75 USPQ2d at 1556-57; and Ex
parte Eggert, 67 USPQ2d 1716 (Bd. Pat. App. & Int. 2003).
29 In addition, the limitation "[i]n a check valve assembly in
association with the ventilation system for the passenger space of a motor
vehicle" has been changed to "[a] check valve assembly adaptable for use with a
ventilation system for a passenger space of a motor vehicle." The concurring
opinion (see footnote 11) views this change as neither a broadening nor a
material narrowing. We view this change as being a slight broadening in an
aspect that is clearly not germane to the prior art rejection.
-91-
others, then the broadening aspects of the reissue claim must be
balanced against the narrowing aspects of the reissue claim to
determine if the recapture rule bars the claim.28
APPLICATION OF THE RECAPTURE RULE TO CLAIM 14
As noted in Clement, the first step in applying the recapture
rule is to determine whether and in what "aspect" the reissue claim
is broader than the patent claims. This step of the analysis is
important to ensure that the appellant has not run afoul of the
two-year limitation on broadening, and, if broadening has occurred,
to establish exactly in what aspects such broadening has occurred.
Claim 14 is broader than patent claim 1 in that the limitation
"wherein the inner frame (4) has a surrounding rim (7) carrying rib
members (8) spaced transversely with stays (9) extending therefrom
and a surrounding frame (10) joining the stays (9)" has been
deleted.29
Claim 14 is broader than patent claim 11 in that the
limitation "wherein the clip connection (6) comprises a springy
tongue (22') formed separate from the outer housing (3), said
Appeal No. 2005-0841
Application No. 08/230,083
30 See footnote 29.
31 We have selected original patent application claim 8 as
representative of the "surrendered subject matter" since this claim is, in our
view, the closest in scope to rejected claim 14. In the rejection under appeal
(see final rejection mailed November 9, 1999), the examiner relied upon original
patent application claim 1 as the basis for the rejection. In the response to
argument section of the Supplemental Examiner's Answer (mailed July 23, 2004),
the examiner relied upon original patent application claim 10 as the basis for
the rejection. The concurrence relies upon original patent application claims 9
and 11 (which they believe have the most limitations in common with rejected
claim 14) as the basis for affirming the rejection. Viewing either claim 9 or
claim 11 as the "surrendered subject matter" does not change the outcome, in our
view, concerning claim 14 on appeal since the limitations of claim 9 and claim 11
are completely unrelated to the prior art rejection since those limitations are
met by the prior art applied in the prior art rejection. The selection of a
representative claim is a matter of exposition convenience. A proper Clement
analysis of any surrendered claim would result in the same outcome.
32 See footnote 29.
-92-
springy tongue (22') being arranged on a locking element (30) which
can be connected with the outer housing (3), and said locking
element (30) being guided over a dovetail guide (31) on the outer
surface of the outer housing (3)" has been deleted.30
The prosecution history of Application No. 07/642,475 set
forth in the plurality opinion establishes each of original patent
application claims 1, 3-5 and 7-11 as surrendered subject matter
since the appellant either canceled or amended each of those claims
in order to overcome a prior art rejection. In compliance with the
second step set forth in Clement, we now must determine whether the
surrendered subject matter has crept into the rejected reissue
claim. We therefore compare rejected reissue claim 14 with the
surrendered subject matter (i.e., original patent application
claims 1, 3-5 and 7-11).
Claim 14 is not broader than original patent application
claim 831 in any relevant aspect.32 Claim 14 is narrower than
Appeal No. 2005-0841
Application No. 08/230,083
33 Original patent application claim 8 depended from original patent
application claim 7 which depended from original patent application claim 1.
34 In the prior art rejection of original patent application claims 1,
3-5 and 7-11, the examiner combined either U.S. Patent No. 3,405,968 to Feles et
al. (Feles) or U.S. Patent No. 4,781,106 to Frien with U.S. Patent No. 4,691,623
to Mizusawa. The examiner ascertained that Feles and Frien do not disclose the
resilient clip connection. Mizusawa shows a ventilator device having a single
elastic pawl. The examiner then concluded that it would have been obvious to one
having ordinary skill in the art at the time the invention was made to provide
either Feles and Frien with an elastic pawl as suggested and taught by Mizusawa.
Thus, the applied prior art does not teach or suggest both a first clip
connection comprising a first springy tongue spaced from the wall and a second
clip connection comprising a second springy tongue integral with the surrounding
wall.
35 There is very little specific authority or guidance given by the
Federal Circuit as to how one ascertains whether or not an aspect is or is not
germane to the prior art rejection. Since there is no prior art rejection of
claim 14 and the applied prior art does not teach or suggest both a first clip
connection comprising a first springy tongue spaced from the wall and a second
clip connection comprising a second springy tongue integral with the surrounding
wall (see footnote 34), it is appropriate, in our view, to conclude that the
narrowing aspect overcomes the prior art applied and is therefore germane to the
prior art rejection.
-93-
original patent application claim 8 in the following aspect: "[a]
second clip connection comprising a second springy tongue integral
with the surrounding wall."
Since claim 14 is broader than original patent application
claim 833 in one non-germane aspect, and also narrower than
original patent application claim 8 in one aspect, the broadening,
non-germane aspect of claim 14 must be balanced against the
narrowing aspect of claim 14. The narrowing aspect is germane to
the prior art rejection in the sense that it overcomes the prior
art applied in the prior art rejection.34, 35 Viewed from this
perspective, claim 14 is at least narrower in all aspects germane
to the prior art rejection (see footnotes 29 and 35), thus falling
into Clement principle (3)(b) and avoiding the recapture rule.
Appeal No. 2005-0841
Application No. 08/230,083
-94-
When viewed from the perspective of the concurring opinion (see
footnote 29) that the change of the limitation "[i]n a check valve
assembly in association with the ventilation system for the
passenger space of a motor vehicle" to "[a] check valve assembly
adaptable for use with a ventilation system for a passenger space
of a motor vehicle" is neither a broadening nor a material
narrowing, claim 14 would only be narrower than the surrendered
subject matter, thus falling into Clement principle (2) and
avoiding the recapture rule.
Viewed from an alternative perspective, claim 14 avoids the
recapture rule (1) regardless of whether the narrowing aspect of
this claim is considered germane to the prior art rejection and
perhaps more importantly, (2) regardless of how surrendered subject
matter is defined. That is, the recapture rule is avoided even if
surrendered subject matter is as defined in the plurality and
concurring opinions and even if the narrowing aspect of claim 14 is
completely unrelated to the rejection as determined expressly in
the concurring opinion and implicitly in the plurality opinion.
As explained in Hester, 142 F.3d at 1482-83, 46 USPQ2d at
1649-50, reissue claims which recapture surrendered subject matter
nevertheless may avoid 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 through reissue a scope of protection to which
he is rightfully entitled for such overlooked aspects.
Appeal No. 2005-0841
Application No. 08/230,083
-95-
Accord North American Container, 415 F.3d at 1349, 75 USPQ2d at
1556 ("finally, we determine whether the reissue claims were
materially narrowed in other respects, so that the claims may not
have been enlarged, and hence avoid the recapture rule"); Pannu,
258 F.3d at 1371, 59 USPQ2d at 1600 ("[f]inally, the court must
determine whether the reissued claims were materially narrowed in
other respects to avoid the recapture rule").
We have previously determined that the narrowing aspect of
claim 14 (i.e., "[a] second clip connection comprising a second
springy tongue integral with the surrounding wall") concerns an
expressly disclosed embodiment of the invention which had never
before been claimed. Significantly, neither the plurality nor the
concurring opinions disagree with our determination. It is
undisputed, therefore, that the claim 14 narrowing is an overlooked
aspect of the invention since it had never been claimed in the
original patent application. Further, this claim narrowing is a
material narrowing because it renders claim 14 novel and unobvious
over the prior art of record. To elaborate, claim 14 without its
narrowing aspect would essentially correspond to rejected original
claims 1, 7 or 8 and thus would presumably be unpatentable over the
prior art applied in the rejection of original claims 1, 7 and 8.
Because it is the narrowing aspect only which renders claim 14
patentable over the prior art, it is appropriate to consider this
narrowing to be material.
Appeal No. 2005-0841
Application No. 08/230,083
36 This is the claim the examiner relied on in the response to argument
section of the Supplemental Examiner's Answer (mailed July 23, 2004). See
footnote 31.
37 See footnote 29.
38 Original patent application claim 10 depended from original patent
application claim 1.
-96-
In summary, claim 14 avoids the recapture rule because it is
"materially narrower in other overlooked aspects of the invention"
and thereby provides the appellant with "a scope of protection to
which he is rightfully entitled for such overlooked aspects."
Hester, 142 F.3d at 1482-83, 46 USPQ2d at 1650.
Claim 14 is broader than original patent application claim
1036 in the following additional aspect: the limitation "wherein
the clip connection (6) comprises a springy tongue (22') formed
separate from the outer housing (3)" has been deleted.37 Claim 14
is narrower than original patent application claim 10 in the
following aspects: (1) the outer housing having "a surrounding
wall"; and (2) "[a] second clip connection comprising a second
springy tongue integral with the surrounding wall."
Since claim 14 is broader than original patent application
claim 10 in two aspects, and also narrower than original patent
application claim 10 in two aspects, the broadening aspects of
claim 14 must be balanced against the narrowing aspects of claim
14. The broadening aspects are completely unrelated to the prior
art rejection since both limitations were set forth in original
patent application claim 1038 and were met by the prior art applied
Appeal No. 2005-0841
Application No. 08/230,083
39 See footnote 35.
-97-
in the prior art rejection. The first narrowing aspect is not
germane to the prior art rejection in the sense that it does not
overcome the prior art applied in the prior art rejection. The
second narrowing aspect is germane to the prior art rejection in
the sense that it overcomes the prior art applied in the prior art
rejection.39 Moreover, this second narrowing aspect is an
overlooked aspect of the invention since it had never been claimed
in the original patent application and is a material narrowing
since it is novel and unobvious over the prior art of record. See
Hester, id. Even assuming the "surrendered subject matter" to be
that set forth in the plurality and concurring opinions, claim 14
still would avoid the "recapture rule" because this second
narrowing aspect was a material and overlooked aspect of the
invention as more fully explained above.
In accordance with Clement, if a reissue claim is narrower in
an aspect germane to the prior art rejection, and broader in an
aspect unrelated to the rejection, the recapture rule does not bar
the claim. Since claim 14 is narrower than original patent
application claim 10 in an aspect germane to the prior art
rejection, and broader than original patent application claim 10 in
aspects unrelated to the rejection, the recapture rule does not bar
the claim.
For the reasons set forth above, we would reverse the decision
of the examiner to reject claim 14 under 35 U.S.C. § 251.
Appeal No. 2005-0841
Application No. 08/230,083
40 See footnote 29.
-98-
APPLICATION OF THE RECAPTURE RULE TO CLAIM 16
In applying the first step of Clement, we find that claim 16
is broader than patent claim 1 in that the limitation "wherein the
inner frame (4) has a surrounding rim (7) carrying rib members (8)
spaced transversely with stays (9) extending therefrom and a
surrounding frame (10) joining the stays (9)" has been deleted.40
Claim 16 is broader than patent claim 11 in that the
limitation "wherein the clip connection (6) comprises a springy
tongue (22') formed separate from the outer housing (3), said
springy tongue (22') being arranged on a locking element (30) which
can be connected with the outer housing (3), and said locking
element (30) being guided over a dovetail guide (31) on the outer
surface of the outer housing (3)" has been deleted.
The prosecution history of Application No. 07/642,475 set
forth in the plurality opinion establishes each of original patent
application claims 1, 3-5 and 7-11 as surrendered subject matter
since the appellant either canceled or amended each of those claims
in order to overcome a prior art rejection. In compliance with the
second step set forth in Clement, we now must determine whether the
surrendered subject matter has crept into the rejected reissue
claim. We therefore compare rejected reissue claim 16 with the
surrendered subject matter (i.e., original patent application
claims 1, 3-5 and 7-11).
Appeal No. 2005-0841
Application No. 08/230,083
41 We have selected original patent application claim 11 as
representative of the "surrendered subject matter" since this claim is, in our
view, the closest in scope to rejected claim 16. In the rejection under appeal
(see final rejection mailed November 9, 1999), the examiner relied upon original
patent application claim 1 as the basis for the rejection. In the response to
argument section of the Supplemental Examiner's Answer (mailed July 23, 2004),
the examiner relied upon original patent application claim 11 as the basis for
the rejection. The concurrence relies upon original patent application claim 11
(which they believe have the most limitations in common with rejected claim 16)
as the basis for affirming the rejection. See footnote 30.
-99-
Claim 16 is broader than original patent application claim
1141 in the following aspect: the limitation that "wherein the
clip connection (6) comprises a springy tongue" has been deleted.
Claim 16 is not narrower than original patent application claim 11
in any aspect.
Since claim 16 is as broad as or broader than original patent
application claim 11 in all aspects (i.e., claim 16 contains no
limitation narrowing the scope of original patent application claim
11), the recapture rule bars the claim. Clement, 131 F.3d at 1470,
45 USPQ2d at 1165.
The appellant argues that claim 16 has been narrowed relative
to the surrendered subject of original patent application claim 11
in that it includes the limitation of "the clip connection securing
the outer housing to the locking element and joining the inner
frame, the outer housing, and the check valve element to the motor
vehicle." We do not agree. Original patent application claim 1
included the limitation that "the assembled unit comprising the
Appeal No. 2005-0841
Application No. 08/230,083
-100-
inner frame (4), the outer housing (3), and the check valve element
(3) [sic, (5)] is joined to a support (2) of the motor vehicle
through a resilient clip connection (6) carried on the outer
housing (3)." Original patent application claim 10 included the
limitation that "wherein the clip connection (6) comprises a
springy tongue (22') formed separate from the outer housing (3)"
and original patent application claim 11 included the limitation
that "wherein the springy tongue (22') is arranged on a locking
element (30) which can be connected with the outer housing (3)."
In our view, these limitations of original patent application
claims 1, 10 and 11 fully correspond to the above-quoted argued
limitation of claim 16.
For the reasons set forth above, we would affirm the decision
of the examiner to reject claim 16 under 35 U.S.C. § 251.
Appeal No. 2005-0841
Application No. 08/230,083
-101-
SUMMARY
To summarize, we would reverse the decision of the examiner to
reject claim 14 under 35 U.S.C. § 251 and would affirm the decision
of the examiner to reject claim 16 under 35 U.S.C. § 251.
AFFIRMED-IN-PART and REVERSED-IN-PART
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
) BOARD OF PATENT
) APPEALS
) AND
) INTERFERENCES
ROMULO H. DELMENDO )
Administrative Patent Judge )
)
)
)
)
BEVERLY A. FRANKLIN )
Administrative Patent Judge )
Appeal No. 2005-0841
Application No. 08/230,083
-102-
Judge McQuade, concurring-in-part; dissenting-in-part.
The reissue recapture rule prevents a patentee from regaining
through reissue the subject matter that was surrendered in an
effort to obtain allowance of the original claims. North American
Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1349,
75 USPQ2d 1545, 1556 (Fed. Cir. 2005); Pannu v. Storz Instruments
Inc., 258 F.3d 1366, 1370-71, 59 USPQ2d 1597, 1600 (Fed. Cir.
2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 1480,
46 USPQ2d 1641, 1647 (Fed. Cir. 1998); In re Clement, 131 F.3d
1464, 1468, 45 USPQ2d 1161, 1164 (Fed. Cir. 1997); Mentor Corp. v.
Coloplast, Inc., 998 F.2d 992, 995, 27 USPQ2d 1521, 1524 (Fed. Cir.
1993). In recent cases, the Court of Appeals for the Federal
Circuit has employed a three-step process to apply the reissue
recapture rule: the first step is to determine whether and in what
aspect the reissue claims are broader than the patent claims; the
second step is to determine whether the broader aspects of the
reissue claims relate to surrendered subject matter; and the third
step is to determine whether the reissue claims are materially
narrowed in other respects so as to avoid the recapture rule.
North American Container, 415 F.3d at 1349, 75 USPQ2d at 1556;
Pannu, 258 F.3d at 1371, 59 USPQ2d at 1600; Hester, 142 F.3d at
1480-83, 46 USPQ2d at 1648-50. The purpose of the third step is
Appeal No. 2005-0841
Application No. 08/230,083
-103-
to allow a patentee to obtain through reissue a scope of protection
to which he is rightfully entitled for overlooked aspects. Hester,
142 F.3d at 1483, 46 USPQ2d at 1650.
In essence, reissue claims 14 and 16 are broader than the
claims in U.S. Patent No. 5,105,731 in that neither includes the
limitation in independent patent claim 1 which reads “wherein the
inner frame (4) has a surrounding rim (7) carrying rib members (8)
spaced transversely with stays (9) extending therefrom and a
surrounding frame (10) joining the stays (9),” or the limitation
in independent patent claim 11 which reads “wherein the clip
connection (6) comprises a springy tongue (22') formed separate
from the outer housing (3), said springy tongue (22') being
arranged on a locking element (30) which can be connected with the
outer housing (3), and said locking element (30) being guided over
a dovetail guide (31) on the outer surface of the outer housing
(3).”
These two limitations appeared in substance in original
application claim 2 (which depended from claim 1) and claim 12
(which depended from claim 1 through claims 10 and 11),
respectively. The examiner never rejected claims 2 and 12 on prior
art grounds and the appellant simply canceled these claims and
rewrote them in independent form as claims 15 and 16 (subsequently
renumbered as patent claims 1 and 11, respectively), canceled
Appeal No. 2005-0841
Application No. 08/230,083
-104-
claim 1, and made minor amendments to the remaining claims to
obtain the allowance of the original application. Since reissue
claims 14 and 16 do not include the limitations from original
application claims 2 and 12 which were relied on by the appellant
to obtain the patent, the broadened aspects of claims 14 and 16
arguably relate to surrendered subject matter. The prosecution
history of the patent, however, contains no evidence that the
appellant ever considered the limitations in original application
claims 2 and 12 to embody critical or exclusively defining elements
of the invention. Hence, on the record before us, the broadened
aspects of reissue claims 14 and 16 relate to surrendered subject
matter only in a limited sense. Conceivably, these broadened
aspects merely set the limits of the surrendered subject matter at
the scope of the original application claims which were canceled or
amended.
Reissue claim 14 includes the limitation which reads “the
second clip connection comprising a second springy tongue integral
with the surrounding wall.” The underlying specification indicates
that this limitation, which was not recited in any of the original
application claims, relates to a significant aspect of the
appellant’s invention. Moreover, the prior art of record does not
anticipate, and would not have suggested, the subject matter
recited in claim 14 due to the presence of such limitation.
Appeal No. 2005-0841
Application No. 08/230,083
-105-
Reasonably viewed in light of the record as a whole, this
limitation materially narrows claim 14 to the extent necessary to
avoid the recapture rule and allows the appellant to obtain through
reissue a scope of protection to which he is rightfully entitled
for an overlooked aspect of his invention. The majority’s
conclusion to the contrary stems from analyses which, among other
faults, attach too much weight to the broadened aspects of claim 14
and too little, if any, weight to the materially narrowed aspect of
the claim.
Claim 16, on the other hand, includes no materially narrowing
limitation and has a scope essentially similar to that of original
application claim 11 which was amended in light of a prior art
rejection. Thus, claim 16 would allow the appellant to regain
through reissue subject matter that was surrendered to obtain the
patent.
Accordingly, the decision of the examiner to reject claims 14
and 16 under 35 U.S.C. § 251 should be reversed with respect to
claim 14 and affirmed with respect to claim 16.

) BOARD OF PATENT
JOHN P. MCQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
Appeal No. 2005-0841
Application No. 08/230,083
-106-
Fay, Sharpe, Beall,
Fagan, Minnich & McKee
1100 Superior Avenue, Suite 700
Cleveland, OH 44114-2518
Appeal No. 2005-0841
Application No. 08/230,083
A-1
Appendix 1
Brief description the drawings of Krause, U.S. Patent 5,105,731
(drawing sheets 1-3 of Krause are attached as appendix pages 2-4)
Figure 1 on page 2 of this appendix is a cross-sectional view
through the check valve structure formed in accordance with the
preferred embodiment of the invention. Figure 1 shows the
structure in an installed condition in the vehicle.
Figure 2 on page 3 of this appendix is a front view of the inner
frame structure used in the figure 1 embodiment.
Figure 3 on page 3 of this appendix is a bottom view of the inner
frame structure shown in figure 2.
Figure 4 on page 2 of this appendix is a cross-sectional view taken
on line IV-IV of figure 2.
Figure 5 on page 2 of this appendix is an enlarged view of the
fastening zone for the flexible elastic closing valve elements.
Figure 6 on page 3 of this appendix is a cross-sectional view of a
part of the outer housing and the inner frame (the components are
partially broken away to more clearly illustrate certain features
of the construction).
Figure 7 on page 3 of this appendix is a top view of the embodiment
of figure 6.
Figure 8 on page 3 of this appendix is a cross-sectional view taken
along the line VIII-VIII in figure 7.
Figure 9 on page 4 of this appendix shows another form of the
invention where the view is taken along line IX-IX of figure 10.
Figure 10 on page 4 of this appendix is a top plan view of the
embodiment according to figure 9.
Figure 11 on page 4 of this appendix is a cross-sectional view
taken along the line XI-XI in figure 10.
Appeal No. 2005-0841
Application No. 08/230,083
A-2
Appeal No. 2005-0841
Application No. 08/230,083
A-3
Appeal No. 2005-0841
Application No. 08/230,083
A-4
Appeal No. 2005-0841
Application No. 08/230,083
A-5
Appendix 2
Claims of original application, as filed
(matter in bold and [brackets] added)
1. In a check valve assembly in association with the
ventilation system for the passenger space of a motor vehicle,
said assembly comprising an outer housing to which an inner
frame is connected with a check valve element formed of
flexible sheet material clamped between the outer housing and
the inner frame, the improvement wherein the inner frame (4)
is received into an open end of the outer housing (3) and the
assembled unit comprising the inner frame (4), the outer
housing (3), and the check valve [(5)] is joined to a support
(2) of the motor vehicle through a resilient clip connection
(6) carried on the outer housing (3).
2. The assembly as defined in claim 1 wherein the inner
frame (4) has a surrounding rim (7) carrying rib members (8)
spaced transversely with stays (9) extending therefrom and a
surrounding frame (10) joining the stays (9).
3. The assembly as defined in claim 1 wherein an oblique
grid (11) is arranged on the outer housing (3) and end
surfaces (12) of the surrounding frame (10) of the inner frame
(4) and a closing zone (13) of the oblique grid (11) form the
clamp for the check valve element.
4. The assembly as defined in claim 3 wherein the
surrounding frame (10) of the inner frame (4) has an end
surface (12) carrying pins (16) spaced from one another and
penetrating through the rim zone (16) of the check valve (5)
into lodged position in openings (17) formed in the closing
zone (13) of the oblique grid (11) of the outer housing (3).
5. The assembly as defined in claim 1 wherein the outer
housing (3) has a surrounding rim (14) with a clamping
connection means (18) for fastening to opposite elements (19)
of a surrounding rim (20) of the inner frame (4).
6. The assembly as defined in claim 2 wherein the outer
housing (3) has a surrounding rim (14) and a surrounding wall
(21) on the end of which is formed this oblique grid (11).
Appeal No. 2005-0841
Application No. 08/230,083
A-6
7. The assembly as defined in claim 1 wherein the
surrounding wall (21) has an upper side provided with at least
one springy tongue (22, 22') directed toward the support (2)
and functioning as the clip connection (6).
8. The assembly as defined in claim 7 wherein the at least
one springy tongue (22) is arranged in a pocket-like open zone
(23) of the surrounding wall (21).
9. The assembly as defined in claim 8 wherein the
surrounding rim (14) of tie outer housing (3) has a
surrounding groove (24) directed toward the at least one
springy tongue (22), said groove (24) carrying a sealing ring
(25).
10. The assembly as defined in claim 1 wherein the clip
connection (6) comprises a springy tongue (22') formed
separate from the outer housing (3).
11. The assembly as defined in claim 10 wherein the springy
tongue (22') is arranged on a locking element (30) which can
be connected with the outer housing (3).
12. The assembly as defined in claim 11 wherein the locking
element (30) is guided over a dovetail guide (31) on the outer
surface of the outer housing (3).
13. The assembly as defined in claim 12 wherein the locking
element (30) has a gripping edge (33) which is arranged on the
springy tongue (22') and engages a stop surface (32) on the
outer housing (3).
14. The assembly as defined in claim 13 wherein the springy
tongue (22') lies in the middle zone of the locking element
(30) between the surfaces of the dovetail guide (31).
Appeal No. 2005-0841
Application No. 08/230,083
A-7
Appendix 3
Claims after presentation of amendment
in original application (matter in bold and {braces} added)
(matter in [brackets and strikeout] deleted by the amendment
matter underlined added by the amendment)
1. In a check valve assembly in association with the
ventilation system for the passenger space of a motor vehicle,
said assembly comprising an outer housing to which an inner
frame is connected with a check valve element formed of
flexible sheet material clamped between the outer housing and
the inner frame, the improvement wherein the inner frame (4)
is received into an open end of the outer housing (3) and the
assembled unit comprising the inner frame (4), the outer
housing (3), and the check valve element {(5)} is joined to a
support (2) of the motor vehicle through a resilient clip
connection (6) carried on the outer housing (3).
2. Canceled.
3. (Amended) The assembly as defined in claim [1] 15
wherein an oblique grid (11) is arranged on the outer housing
(3) and end surfaces (12) of the surrounding frame (10) of the
inner frame (4) and a closing zone (13) of the oblique grid
(11) form the clamp for the check valve element.
4. (Amended) The assembly as defined in claim 3 wherein the
[surrounding frame (10) of the inner frame (4) has an] end
[surface] surfaces (12) [carrying] carry pins (16) spaced from
one another and penetrating through a [the] rim zone (16) of
the check valve element [(5)] into lodged position in openings
(17) formed in [the closing zone] (13) of the oblique grid
(11) [of the outer housing (3)].
5. (Amended) The assembly as defined in claim [1] 15
wherein the outer housing (3) has a surrounding rim (14) with
a clamping connection means (18) for fastening to [opposite
elements (19) of a] the surrounding rim [(20)] (7) of the
inner frame (4).
6. (Amended) The assembly as defined in claim [2] 3 wherein
the outer housing (3) has a surrounding rim (14) and a
surrounding wall (21) on the end of which is formed [this] the
oblique grid (11).
Appeal No. 2005-0841
Application No. 08/230,083
A-8
7. (Amended) The assembly as defined in claim [1] 6 wherein
the surrounding wall (21) has an upper side provided with at
least one springy tongue (22, 22') directed toward the support
(2) and functioning as the clip connection (6).
8. (Amended) The assembly as defined in claim 7 wherein the
at least one springy tongue (22) is carried by [arranged in a
pocket-like open zone (23) of] the surrounding wall (21).
9. (Amended) The assembly as defined in claim 8 wherein the
surrounding rim (14) of [tie] the outer housing (3) has a
surrounding groove (24) directed toward the at least one
springy tongue (22), said groove (24) carrying a sealing ring
(25).
10. (Amended) The assembly as defined in claim [1] 15
wherein the clip connection (6) comprises a springy tongue
(22') formed separate from the outer housing (3).
11. (Amended) The assembly as defined in claim 10 wherein
the springy tongue (22') is [arranged] carried on a locking
element (30) which [can be] is connected with the outer
housing (3).
12. Canceled.
13. (Amended) The assembly as defined in claim [12] 16
wherein the [locking element (30) has a gripping edge (33)
which is arranged on the] springy tongue (22') has a gripping
edge (33) which [and] engages a stop surface (32) on the outer
housing (3).
14. (Amended) The assembly as defined in claim 13 wherein
the springy tongue (22') [lies in the middle zone of] is
centrally located on the locking element (30) [between the
surfaces of the dovetail guide (31)].
15. In a check valve assembly in association with the
ventilation system for the passenger space of a motor vehicle,
said assembly comprising an outer housing to which an inner
frame is connected with a check valve element formed of
flexible sheet material clamped between the outer housing and
the inner frame, the improvement wherein the inner frame (4)
is received into an open end of the outer housing (3) and the
assembled unit comprising the inner frame (4), the outer
Appeal No. 2005-0841
Application No. 08/230,083
A-9
housing (3), and the check valve {5} is joined to a support
(2) of the motor vehicle through a resilient clip connection
(6) carried on the outer housing (3); and,
wherein the inner frame (4) has a surrounding rim (7)
carrying rib members (8) spaced transversely with stays (9)
extending therefrom and a surrounding frame (10) joining the
stays (9).
16. In a check valve assembly in association with the
ventilation system for the passenger space of a motor vehicle,
said assembly comprising an outer housing to which an inner
frame is connected with a check valve element formed of
flexible sheet material clamped between the outer housing and
the inner frame, the improvement wherein the inner frame (4)
is received into an open end of the outer housing (3) and the
assembled unit comprising the inner frame (4), the outer
housing (3), and the check valve {(5)} is joined to a support
(2) of the motor vehicle through a resilient clip connection
(6) carried on the outer housing (3); and,
wherein the clip connection (6) comprises a springy
tongue (22') formed separate from the outer housing (3), said
springy tongue (22') being arranged on a locking element (30)
which can be connected with the outer housing (3), and said
locking element (30) being guided over a dovetail guide (31)
on the outer surface of the outer housing (3).
Appeal No. 2005-0841
Application No. 08/230,083
A-10
Appendix 4
Claims 4 and 15 after examiner's amendment
in original application (matter in bold and {braces} added)
(matter underlined added by examiner
matter in strikeout deleted by examiner)
4. (Amended) The assembly as defined in claim 3 wherein the
end surfaces (12) carry pins (16) spaced from one another and
penetrating through a rim zone (16) of the check valve element
into lodged position in openings (17) formed in (13) of the
oblique grid (11).
15. In a check valve assembly in association with the
ventilation system for the passenger space of a motor vehicle,
said assembly comprising an outer housing to which an inner
frame is connected with a check valve element formed of
flexible sheet material clamped between the outer housing and
the inner frame, the improvement wherein the inner frame (4)
is received into an open end of the outer housing (3) and the
assembled unit comprising the inner frame (4), the outer
housing (3), and the check valve element {5} is joined to a
support (2) of the motor vehicle through a resilient clip
connection (6) carried on the outer housing (3); and,
wherein the inner frame (4) has a surrounding rim (7)
carrying rib members (8) spaced transversely with stays (9)
extending therefrom and a surrounding frame (10) joining the
stays (9).
Appeal No. 2005-0841
Application No. 08/230,083
A-11
Appendix 5
Claims as they appear in U.S. Patent 5,105,731
1. (application claim 15 prior to re-numbering) In a check
valve assembly in association with the ventilation system for
the passenger space of a motor vehicle, said assembly
comprising an outer housing to which an inner frame is
connected with a check valve element formed of flexible sheet
material clamped between the outer housing and the inner
frame, the improvement wherein the inner frame (4) is received
into an open end of the outer housing (3) and the assembled
unit comprising the inner frame (4), the outer housing (3),
and the check valve element {5} is joined to a support (2) of
the motor vehicle through a resilient clip connection (6)
carried on the outer housing (3); and,
wherein the inner frame (4) has a surrounding rim (7)
carrying rib members (8) spaced transversely with stays (9)
extending therefrom and a surrounding frame (10) joining the
stays (9).
2. (application claim 3 prior to re-numbering) The assembly
as defined in claim 15 wherein an oblique grid (11) is
arranged on the outer housing (3) and end surfaces (12) of the
surrounding frame (10) of the inner frame (4) and a closing
zone (13) of the oblique grid (11) form the clamp for the
check valve element.
3. (application claim 4 prior to re-numbering) The assembly
as defined in claim 2 wherein the end surfaces (12) carry pins
(16) spaced from one another and penetrating through a rim
zone (16) of the check valve element into lodged position in
openings (17) formed in the oblique grid (11).
4. (application claim 5 prior to re-numbering) The assembly
as defined in claim 15 wherein the outer housing (3) has a
surrounding rim (14) with a clamping connection means (18) for
fastening to the surrounding rim (7) of the inner frame (4).
5. (application claim 6 prior to re-numbering) The assembly
as defined in claim 2 wherein the outer housing (3) has a
surrounding rim (14) and a surrounding wall (21) on the end of
which is formed the oblique grid (11).
Appeal No. 2005-0841
Application No. 08/230,083
A-12
6. (application claim 7 prior to re-numbering) The assembly
as defined in claim 5 wherein the surrounding wall (21) has an
upper side provided with at least one springy tongue (22, 22')
directed toward the support (2) and functioning as the clip
connection (6).
7. (application claim 8 prior to re-numbering) The assembly
as defined in claim 6 wherein the at least one springy tongue
(22) is carried by the surrounding wall (21).
8. (application claim 9 prior to re-numbering) The assembly
as defined in claim 8 wherein the surrounding rim (14) of the
outer housing (3) has a surrounding groove (24) directed
toward the at least one springy tongue (22), said groove (24)
carrying a sealing ring (25).
9. (application claim 10 prior to re-numbering) The
assembly as defined in claim 15 wherein the clip connection
(6) comprises a springy tongue (22') formed separate from the
outer housing (3).
10. (application claim 11 prior to re-numbering) The
assembly as defined in claim 9 wherein the springy tongue
(22') is carried on a locking element (30) which is connected
with the outer housing (3).
11. (application claim 16 prior to re-numbering) In a check
valve assembly in association with the ventilation system for
the passenger space of a motor vehicle, said assembly
comprising an outer housing to which an inner frame is
connected with a check value element formed of flexible sheet
material clamped between the outer housing and the inner
frame, the improvement wherein the inner frame (4) is received
into an open end of the outer housing (3) and the assembled
unit comprising the inner frame (4), the outer housing (3),
and the check valve {(5)} is joined to a support (2) of the
motor vehicle through a resilient clip connection (6) carried
on the outer housing (3); and,
wherein the clip connection (6) comprises a springy
tongue (22') formed separate from the outer housing (3), said
springy tongue (22') being arranged on a locking element (30)
which can be connected with the outer housing (3), and said
locking element (30) being guided over a dovetail guide (31)
on the outer surface of the outer housing (3).
Appeal No. 2005-0841
Application No. 08/230,083
A-13
12. (application claim 13 prior to re-numbering) The
assembly as defined in claim 11 wherein the springy tongue
(22') has a gripping edge (33) which engages a stop surface
(32) on the outer housing (3).
13. (application claim 14 prior to re-numbering) The
assembly as defined in claim 12 wherein the springy tongue
(22') is centrally located on the locking element (30).
Appeal No. 2005-0841
Application No. 08/230,083
A-14
Appendix 6
Claims 14 and 16 on appeal
14. A check valve assembly adaptable for use with a
ventilation system for a passenger space of a motor vehicle,
the assembly comprising:
an outer housing having an open end and a surrounding
wall;
an inner frame received in the open end;
a check valve element formed of flexible sheet material
clamped between the outer housing and the inner frame; and,
first and second resilient clip connections joining the
outer housing, the inner frame, and the check valve element to
a support of the motor vehicle,
the first clip connection comprising a first springy
tongue spaced from the wall, and the second clip connection
comprising a second springy tongue integral with the
surrounding wall.
16. A check valve assembly adaptable for use with a
ventilation system of a passenger space of a motor vehicle,
the assembly comprising:
an outer housing having an open end;
an inner frame received in the open end;
a check valve element formed of flexible sheet material
clamped between the outer housing and the inner frame; and,
a resilient clip connection formed separate from the
outer housing and carried on a locking element which is
connected with the outer housing the clip connection securing
the outer housing to the locking element and joining the inner
frame, the outer housing, and the check valve element to the
motor vehicle.
Appeal No. 2005-0841
Application No. 08/230,083
A-15
Appendix 7
The court in Clement, 131 F.3d at 1468-70, 45 USPQ2d at
1163-65 stated that
[a]n attorney's failure to appreciate the full scope of
the invention qualifies as an error under section 251 and
is correctable by reissue. In re Wilder, 736 F.2d 1516,
1519, 222 USPQ 369, 370-71 (Fed. Cir. 1984).
Nevertheless, "deliberate withdrawal or amendment . . .
cannot be said to involve the inadvertence or mistake
contemplated by 35 U.S.C. § 251." Haliczer v. United
States, . . . 356 F.2d 541, 545, 148 USPQ 565, 569 ([Ct.
Cl.] 1966). The recapture rule, therefore, prevents a
patentee from regaining through reissue the subject
matter that he surrendered in an effort to obtain
allowance of the original claims. See Mentor, 998 F.2d
at 995, 27 USPQ2d at 1524. Under this rule, claims that
are "broader than the original patent claims in a manner
directly pertinent to the subject matter surrendered
during prosecution" are impermissible. Id. at 996, 27
USPQ2d at 1525.
The first step in applying the recapture rule is to
determine whether and in what "aspect" the reissue claims
are broader than the patent claims. For example, a
reissue claim that deletes a limitation or element from
the patent claims is broader in that limitation's aspect.
Clement argues that the board focused too much on the
specific limitations that were omitted from the reissue
claims. Although the scope of the claims is the proper
inquiry, In re Richman, . . . 409 F.2d 269, 274, 161 USPQ
359, 362 (CCPA 1969), claim language, including
limitations, defines claim scope. Abtox, Inc. v. Exitron
Corp., 122 F.3d 1019, 1023, 43 USPQ2d 1545, 1548 (Fed.
Cir. 1997); Bell Communications Research, Inc. v.
Vitalink Communications Corp., 55 F.3d 615, 619, 34
USPQ2d 1816, 1819 (Fed. Cir. 1995) ("[T]he language of
the claim defines the scope of the protected
invention."). Under Mentor, courts must determine in
which aspects the reissue claim is broader, which
includes broadening as a result of an omitted limitation.
The board did not err by determining which limitations
Clement deleted from the patent claims.
Appeal No. 2005-0841
Application No. 08/230,083
A-16
The second step is to determine whether the broader
aspects of the reissue claims relate to surrendered
subject matter. To determine whether an applicant
surrendered particular subject matter, we look to the
prosecution history for arguments and changes to the
claims made in an effort to overcome a prior art
rejection. See Mentor, 998 F.2d at 995-96, 27 USPQ2d at
1524-25; Ball Corp. v. United States, 729 F.2d 1429,
1436, 221 USPQ 289, 294-95 (Fed. Cir. 1984).
Although the recapture rule does not apply in the
absence of evidence that the applicant's amendment was
"an admission 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, 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 applicant 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. . . . 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).
Once we determine that an applicant has surrendered
the subject matter of the canceled or amended claim, we
then determine whether the surrendered subject matter has
crept into the reissue claim. Comparing the reissue
claim with the canceled claim is one way to do this. In
re Wadlinger, 496 F.2d 1200, 1204, 181 USPQ 826, 830
(CCPA 1974); Richman, 409 F.2d at 274, 161 USPQ at 362.
If the scope of the reissue claim is the same as or
broader than that of the canceled claim, then the
patentee is clearly attempting to recapture surrendered
subject matter and the reissue claim is, therefore,
unallowable. Ball, 729 F.2d at 1436, 221 USPQ at 295
("The recapture rule bars the patentee from acquiring,
through reissue, claims that are the same or of broader
scope than those claims that were canceled from the
Appeal No. 2005-0841
Application No. 08/230,083
A-17
original application.") (emphasis omitted); Byers, 230
F.2d at 456, 109 USPQ at 56. In contrast, a reissue
claim narrower in scope escapes the recapture rule
entirely. Ball, 729 F.2d at 1436, 221 USPQ at 295.
Some reissue claims, however, are broader than the
canceled claim in some aspects, but narrower in others.
In Mentor, for example, the issued claim, which was
directed to a condom catheter, recited an adhesive means
that was transferred from an outer to an inner surface
without turning the condom inside-out. 998 F.2d at 993,
27 USPQ2d at 1523. The issued claim also recited, inter
alia, that the condom catheter included a "thin
cylindrical sheath member of resilient material rolled
outwardly upon itself to form consecutively larger rolls
. . . ." One canceled claim recited an adhesive means
between the rolls, but did not specify that the adhesive
was transferred from the outer to the inner surface
without turning the condom inside-out. Another canceled
claim recited that adhesive was transferred from the
outer to the inner surface, but did not specify that this
operation was done without turning the condom inside-out.
The prior art rejections focused on the obviousness of
the adhesive means positioned between the rolls and the
process of transferring adhesive to the inner surface of
the condom.
In making amendments to the claim, the applicant
argued that "none of the references relied upon actually
showed the transfer of adhesive from the outer surface to
the inner surface as the sheath is rolled up and then
unrolled." Id. at 995-96, 998 F.2d 992, 27 USPQ2d at
1524-25 (emphasis in original). The reissue claim
eliminated the limitation that adhesive was transferred
from the outer to the inner layer, and was, therefore,
broader in this aspect. The reissue claim was also
narrower than the canceled claim because it recited that
the catheter included "a thin, flexible cylindrical
member of resilient material rolled outwardly upon itself
to form a single roll. . . ." (Emphasis added). We held
that, although the "flexible" and "single roll"
limitations made the reissue claim narrower than both the
canceled and issued claims, it did not escape the
recapture rule because these limitations did not
"materially narrow the claim[]." Id. at 996-97,
27 USPQ2d at 1525-26.
Appeal No. 2005-0841
Application No. 08/230,083
A-18
Similarly, in Ball, the issued claim recited "a
plurality of feedlines" and a "substantially cylindrical
conductor." 729 F.2d at 1432-33, 221 USPQ at 291-92. The
canceled claim recited "feed means includ[ing] at least
one conductive lead," and a "substantially cylindrical
conductor." The prosecution history showed that the
patentee added the "plurality of feedlines" limitation in
an effort to overcome prior art, but the cylindrical
configuration limitation was neither added in an effort
to overcome a prior art rejection, nor argued to
distinguish the claims from a reference. Id. The
reissue claim included limitations not present in the
canceled claims that related to the feed means element,
but allowed for multiple feedlines. On balance, the
claim was narrower than the canceled claim with respect
to the feed means aspect. The reissue claim also deleted
the cylindrical configuration limitation, which made the
claim broader with respect to the configuration of the
conductor. Id. at 1437, 729 F.2d 1429, 221 USPQ at 295.
We allowed the reissue claim because the patentee was not
attempting to recapture surrendered subject matter. Id.
at 1438, 729 F.2d 1429, 221 USPQ at 296.
In both Mentor and Ball, the relevance of the prior
art rejection to the aspects narrowed in the reissue
claim was an important factor in our analysis. From the
results and reasoning of those cases, the following
principles flow: (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; (2) if it is
narrower in all aspects, the recapture rule does not
apply, but other rejections are possible; (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 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
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. Mentor is an
example of (3)(a); Ball is an example of (3)(b).
Appeal No. 2005-0841
Application No. 08/230,083
A-19
Appendix 8
The purpose of the reissue recapture rule was expressed by
Justice Bradley for the court, in Leggett, 101 U.S. at 259-60 as
follows:
It is obvious, on inspection, that the first and
second of these claims are for substantially the same
inventions which were disclaimed before the extension,
and are for different inventions from that which was
included in and secured by the letters-patent as
extended. The court below deemed this, amongst other
things, a fatal objection to the validity of the reissued
letters-patent. We agree with the Circuit Court. We
think it was a manifest error of the commissioner, in the
reissue, to allow to the patentee a claim for an
invention different from that which was described in the
surrendered letters, and which he had thus expressly
disclaimed. The pretence that an 'error had arisen by
inadvertence, accident, or mistake,' within the meaning
of the patent law, was too bald for consideration. The
very question of the validity of these claims had just
been considered and decided with the acquiescence and the
express disclaimer of the patentee. If, in any case,
where an applicant for letters-patent, in order to obtain
the issue thereof, disclaims a particular invention, or
acquiesces in the rejection of a claim thereto, a reissue
containing such claim is valid (which we greatly doubt),
it certainly cannot be sustained in this case. The
allowance of claims once formally abandoned by the
applicant, in order to get his letters-patent through, is
the occasion of immense frauds against the public. It
not unfrequently happens that, after an application has
been carefully examined and compared with previous
inventions, and after the claims which such an
examination renders admissible have been settled with the
acquiescence of the applicant, he, or his assignee, when
the investigation is forgotten and perhaps new officers
have been appointed, comes back to the Patent Office,
and, under the pretence of inadvertence and mistake in
the first specification, gets inserted into reissued
letters all that had been previously rejected. In this
manner, without an appeal, he gets the first decision of
the office reversed, steals a march on the public, and on
Appeal No. 2005-0841
Application No. 08/230,083
A-20
those who before opposed his pretensions (if, indeed, the
latter have not been silenced by purchase), and procures
a valuable monopoly to which he has not the slightest
title. We have more than once expressed our
disapprobation of this practice. As before remarked, we
consider it extremely doubtful whether reissued letters
can be sustained in any case where they contain claims
that have once been formally disclaimed by the patentee,
or rejected with his acquiescence, and he has consented
to such rejection in order to obtain his letters-patent.
Under such circumstances, the rejection of the claim can
in no just sense be regarded as a matter of inadvertence
or mistake. Even though it was such, the applicant
should seem to be estopped from setting it up on an
application for a reissue.
In Dobson, 137 U.S. at 265-66, the Supreme Court stated:
A reissue is an amendment, and cannot be allowed
unless the imperfections in the original patent arose
without fraud, and from inadvertence, accident, or
mistake, (Rev. St. § 4916;) hence the reissue cannot be
permitted to enlarge the claims of the original patent by
including matter once intentionally omitted.
Acquiescence in the rejection of a claim, its withdrawal
by amendment, either to save the application or to escape
an interference, the acceptance of a patent containing
limitations imposed by the patent-office, which narrow
the scope of the invention as at first described and
claimed, are instances of such omission. [Citations
omitted]. It is clear that the claim of this reissue is
not covered by the original patent, and it appears that,
before the issue of the latter, it was passed upon and
rejected, was withdrawn and erased, an interference was
dissolved upon condition of the amendment, and the issue
of the original letters was predicated upon its
abandonment. There is no room for the contention that
there was any inadvertence, accident, or mistake in the
premises. Nor, in the light of these protracted
proceedings in the patent-office, can the applicant be
permitted to treat the deliberate acts of his attorney as
the result of inadvertence, accident, or mistake. The
repeated official decisions and orders, and the repeated
efforts to maintain this claim without success, during
this long struggle, indicate anything but negligence or
inadvertence on the part of the solicitors employed.
Appeal No. 2005-0841
Application No. 08/230,083
A-21
Byers, 230 F.2d at 454-56, 109 USPQ at 55-56, stated that
[t]he issue to be determined in here is whether the
failure to obtain, in the patent sought to be reissued,
claims corresponding to those involved in the present
appeal was due to "error" within the meaning of the
sentence just quoted [35 U.S.C. § 251, first paragraph].
The use of the word "error" in that sentence instead of
the words "inadvertence, accident or mistake," which
appeared in the corresponding section, 35 U.S.C. § 64,
Section 4916 R.S., of the patent statutes prior to the
recodification of 1952, does not involve a substantive
change, and the same type of error is necessary to
justify a reissue after the enactment of the Patent Act
of 1952 as before. [Citations omitted]. Accordingly,
decisions as to what constituted inadvertence, accident
or mistake under the prior law are pertinent here.
. . . .
Original claim 20 was amended by substituting
"coplanar" for flat and by including a further limitation
that the cavity was approximately one-third of the
diameter of the base and, as so amended, it was allowed.
While claim 20 was not technically canceled, the
amendment of that claim by the inclusion of an additional
limitation had exactly the same effect as if the claim as
originally presented had been canceled and replaced by a
new claim including that limitation. So far as the right
to reissue the patent is concerned, therefore, the case
is to be treated as if original claim 20 had been
canceled and replaced by the claim on which the patent
was granted.
While the record does not show the specific
circumstances under which claim 20 was amended, it was
stated by the Board of Appeals that such action was a
"deliberate amending of claim 20 to secure the patent"
and, in the absence of any showing to the contrary, that
statement will be accepted as accurate. [Citations
omitted]. Moreover, the board's statement is in accord
with that in the appellant's brief that the examiner
agreed to allow the claim of appellant's patent "only on
condition that this claim be amended to recite not only
Appeal No. 2005-0841
Application No. 08/230,083
A-22
the three-to-one relationship between the cavity and the
base, but also the specific definition of the cone
angles." It is clear, therefore, that the appellant
deliberately relinquished claim 20 as it originally
stood, in order to obtain the patent.
It is well settled that the deliberate withdrawal or
amendment of a claim in order to obtain a patent does not
involve inadvertence, accident or mistake and is not an
error of the kind which will justify a reissue of the
patent including the matter withdrawn. . . .
. . . .
It is evident that since the deliberate cancellation
of a claim in order to obtain a patent constitutes a bar
to the obtaining of the same claim by reissue, it
necessarily also constitutes a bar to the obtaining of a
claim which differs from that canceled only in being
broader.
Ex parte Feissel, 131 USPQ 252, 254 (Bd. App. 1960)
provided that
[u]pon careful consideration of the issues involved,
we do not agree with the examiner as to the instant
rejection. We do not have here before us a situation
falling strictly within the general rule that where a
claim in a first application is deliberately cancelled or
restricted in response to a rejection thereof on prior
art, the cancelled claim or a claim merely without the
restrictive amendment that was added cannot be obtained
in a reissue. Nor does the instant situation involve a
claim in a reissue application which differs from that
cancelled in the first application only in being broader,
which would be barred as denoted in In re Byers, 43 CCPA
803, 109 USPQ 53, 230 F.2d 451, 1956 C.D. 183, 705 O.G.
444. Here, in the original application, the claim which
was in effect first cancelled contained neither the
amplifier limitation nor the further limitation referred
to by the examiner, while the claim that was later
cancelled contained only the amplifier limitation. There
was no cancellation in that application of any claim of
the scope of that here before us on appeal, namely,
containing only said further limitation but not the
Appeal No. 2005-0841
Application No. 08/230,083
A-23
amplifier limitation. Viewing the claims here involved
in their entireties, as we must, rather than in their
disjointed parts, it is apparent that claims of the
particular scope of those at bar were never presented and
asked for in the original application, and there
abandoned by appellant upon a refusal thereof.
In In re Willingham, 282 F.2d at 356-57, 127 USPQ at 215-16,
the court found that the reissue claims, while broader in scope
than allowed claim 15, were somewhat narrower in scope than deleted
claim 12. The court then stated that
[t]he deliberate cancellation of a claim of an original
application in order to secure a patent cannot ordinarily
be said to be an "error" and will in most cases prevent
the applicant from obtaining the cancelled claim by
reissue. The extent to which it may also prevent him
from obtaining other claims differing in form or
substance from that cancelled necessarily depends upon
the facts in each case and particularly on the reasons
for the cancellation.
In the instant case, the reasons for the deletion of
claim 12 of the original application do not appear of
record, and we may not properly speculate as to what they
may have been and base our decision on the results of
such speculation. The appealed claims differ materially
from cancelled claim 12 and there is nothing of record on
which to base a holding that the cancellation of claim 12
was in any sense an admission that the reissue claims on
appeal were not in fact patentable to appellant at the
time claim 12 was deleted.
Id. at 357, 127 USPQ at 215-16.
The court in Wesseler reversed a rejection under 35 U.S.C.
§ 251 wherein the claims presented on appeal defined patentable
subject matter and were narrower in scope than the cancelled claims
in the application which resulted in the appellant's patent but
Appeal No. 2005-0841
Application No. 08/230,083
42 Shepard v. Carrigan, 116 U.S. 593, 597 (1886) states that
[w]here an applicant for a patent to cover
a new combination is compelled by the
rejection of his application by the patent-
office to narrow his claim by the
introduction of a new element, he cannot
after the issue of the patent broaden his
claim by dropping the element which he was
compelled to include in order to secure his
patent.
A-24
were broader than the patent claims. The court noted (id. at 849,
151 USPQ at 348) that since there is no objection to the appealed
claims based on the prior art, they did not think the statement in
Shepard,42 arising from the facts therein stated, is applicable
here. The court then stated that Shepard may be support for the
rule that "one who deliberately adds a limitation to avoid the
prior art cannot omit that limitation in reissue claims so as to
encroach upon the prior art, but that is not the situation here as
the board's opinions clearly point out." Lastly, the court found
(id. at 850, 151 USPQ at 349) as a factual matter that a mistake
occurred in the prosecution of the patent application. That
mistake was in not then presenting the appealed claims with the
result that the appellant's patent claimed less than he had the
right to claim. The court also found that the record establishes
that the appellant erroneously considered he was securing
protection commensurate with the invention disclosed in the
original application. There was no evidence that the appellant
Appeal No. 2005-0841
Application No. 08/230,083
A-25
intentionally omitted or abandoned the claimed subject matter.
Thus, the court found that while appellant acted "deliberately" he
did so in error. This error, in view of the facts of record, was
held to be an "error without any deceptive intention" which
entitled the appellant to secure a reissue of his patent under the
provisions of 35 U.S.C. § 251.
The court in In re Richman, 409 F.2d 269, 161 USPQ 359, (CCPA
1969) reversed a rejection under 35 U.S.C. § 251 wherein the claims
rejected were narrower in scope than the cancelled claims in the
application which resulted in the appellant's patent but were
broader than the patent claims. The court set forth (id. at 274,
161 USPQ at 362) that the recapture question raised in the appeal
was whether the appealed claims are of the same scope as the
cancelled claims, not whether they lack some specific recitation
absent from the cancelled claims but included in the patent claims.
The court stated (id. at 274-75, 161 USPQ at 363) that
[w]e therefore find neither decision [Wesseler and
Shepard] to be authority for the proposition that a
limitation added to a claim in obtaining its allowance
cannot be broadened, under present statutory law, by
reissue if the limitation turns out to be more
restrictive than the prior art required. Certainly one
might err without deceptive intention in adding a
particular limitation where a less specific limitation
regarding the same feature, or an added limitation
relative to another element, would have been sufficient
to render the claims patentable over the prior art.
Appeal No. 2005-0841
Application No. 08/230,083
A-26
The court in Wadlinger, 496 F.2d at 1207-08, 181 USPQ at 832
stated that
in its decisions both before and after Wesseler, has made
it clear that a reissue applicant is, at most, prevented
by interpretations of the language of § 251, and its
predecessor statute R.S. 4916, from obtaining claims
which are of the same scope as the claims previously
cancelled in the original application. As for obtaining
claims on reissue which are different, no prohibition
arises merely because of the language of the reissue
statute. Still apropos and basic is our statement in
Wesseler [151 USPQ at 348]:
We think the term "error," arising as it does
in a remedial provision designed to advance
both the rights of the public and the inventor,
is to be interpreted as Congress has stated it,
"error without any deceptive intention," and in
light of Supreme Court decisions favoring the
liberal construction of reissue statutes in
order to secure to inventors protection for
what they have actually invented.
See In re Richman, 409 F.2d 269, 56 CCPA 1083 [161 USPQ
359] (1969), holding there was "error without any
deceptive intention" under § 251 where the reissue claims
differed in scope from cancelled claims and also found,
as in Wesseler, that "while appellant acted
'deliberately', he did so in error."
The court in Wadlinger reversed the rejection under 35 U.S.C. § 251
of claims which were narrower in scope than the cancelled claims in
the application but were broader in scope than the patent claims.
The Federal Circuit first discussed the recapture rule in
Ball, 729 F.2d at 1435-37, 221 USPQ at 293-95. The Court provided
that
[r]eissue is not a substitute for Patent Office appeal
procedures. Reissue is an extraordinary procedure and
Appeal No. 2005-0841
Application No. 08/230,083
A-27
must be adequately supported by the circumstances
detailed in 35 U.S.C. § 251 (1976) and in the
implementing regulations, 37 C.F.R. § 1.175 (1982). The
Government asserts that the nature of error that will
justify reissue is narrowly circumscribed to ensure that
reissue remains the exception and not the rule. Relying
on Edward Miller & Co. v. Bridgeport Brass Co., the
Government contends that "a mere error of judgment" is
not adequate to support reissue; rather the error must be
"a real bona fide mistake, inadvertently committed."
The 1952 revision of the patent laws made no
substantive change in the definition of error under
section 251. While deliberate cancellation of a claim
cannot ordinarily be considered error, the CCPA has
repeatedly held that the deliberate cancellation of
claims may constitute error, if it occurs without
deceptive intent. In In re Petrow, the CCPA went so far
as to state that error is sufficient where the deliberate
cancellation of claims does not amount to an admission
that the reissue claims were not patentable at the time
the original claims were canceled. Similarly, in In re
Wesseler, the CCPA stated that error is established where
there is no evidence that the appellant intentionally
omitted or abandoned the claimed subject matter. Thus,
the CCPA has construed the term error under section 251
broadly.
The Ninth Circuit employed a more rigid standard in
Riley v. Broadway-Hale Stores, Inc. stating: "when the
chief element added by reissue has been abandoned while
seeking the original patent, the reissue is void." The
trial judge sought to determine whether Ball had made a
deliberate judgment that claims of substantially the same
scope as the new reissue claims would have been
unpatentable. The Government, arguing from Riley,
submits that the trial judge's approach loses sight of
the feature given up by a patentee in order to secure the
original patent. We decline to adopt the rigid standard
applied in Riley, in favor of the more liberal approach
taken by the CCPA. Petrow clearly establishes the
vitality of the standard employed by the trial judge
under this court's precedent.
Further, the Government argues that we need not reach
the issue of claim scope because the sufficiency of error
is a threshold issue. While claim scope is no oracle on
intent, the Government fails to apprehend its role.
Appeal No. 2005-0841
Application No. 08/230,083
A-28
Rarely is evidence of the patentee's intent in canceling
a claim presented. Thus, the court may draw inferences
from changes in claim scope when other reliable evidence
of the patentee's intent is not available. Claim scope
is not the lodestar of reissue. Rather, the court's
reliance on that indicator in the case law appears to be
born of practical necessity as the only available
reliable evidence.
The Government relies heavily on Haliczer v. United
States, which also involved a suit under 28 U.S.C.
§ 1498. The Court of Claims in that case held the
reissue claims invalid because the patentee sought to
acquire through reissue the same claims that had earlier
been canceled from the original application. The
recapture rule bars the patentee from acquiring, through
reissue, claims that are of the same or of broader scope
than those claims that were canceled from the original
application. On the other hand, the patentee is free to
acquire, through reissue, claims that are narrower in
scope than the canceled claims. If the reissue claims
are narrower than the canceled claims, yet broader than
the original patent claims, reissue must be sought within
2 years after grant of the original patent.
Thus, the applicability of the recapture rule and the
sufficiency of error under section 251 turn in this case,
in the absence of other evidence of the patentee's
intent, on the similarity between the reissue and the
canceled claims. Narrower reissue claims are allowable;
broader reissue claims or reissue claims of the same
scope as the canceled claims are not. The subject matter
of the claims is not alone controlling. Similarly, the
focus is not, as the Government contends, on the specific
limitations or on the elements of the claims but, rather,
on the scope of the claims.

Ball's Reissue Claims

The trial judge required the Government to establish
that the applicant has made a deliberate decision that
the canceled claims are unpatentable. The Government
argues that that standard is not correct because it loses
sight of the feature that the patentee gave up during
prosecution of the original application. We find the
Government's argument entirely unpersuasive. The proper
focus is on the scope of the claims, not on the
Appeal No. 2005-0841
Application No. 08/230,083
A-29
individual feature or element purportedly given up during
prosecution of the original application. The trial judge
quite properly focused on the scope of the claims and we
find no error in this respect. He determined that the
reissue claims were intermediate in scope -- broader than
the claims of the original patent yet narrower than the
canceled claims. [Footnotes omitted]
The Court in Ball found (729 F.2d at 1438, 221 USPQ at 296) that
the reissue claims (which were broader than the canceled claims in
one respect and narrower than the canceled claims in some respects)
were valid. Specifically, the Court found that the non-material,
broader aspects of Ball's reissue claims do not deprive them of
their fundamental narrowness of scope relative to the canceled
claims. Thus, the reissue claims were sufficiently narrower than
the canceled claims to avoid the effect of the recapture rule.
The court in Whittaker, 911 F.2d at 713, 15 USPQ2d at 1745
stated:
Since we hold that the claims of the reissue patent
are narrower in scope than the cancelled original claims
of the application that resulted in the '882 patent, the
'453 patent cannot be held invalid under the recapture
rule as described in Ball Corp. v. United States, 729
F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984) ("the
patentee is free to acquire, through reissue, claims that
are narrower in scope than the canceled claims."
(emphasis in original))
The court in Mentor, 998 F.2d at 995, 27 USPQ2d at 1524 stated
that
[r]eissue "error" is generally liberally construed,
and we have recognized that "[a]n attorney's failure to
appreciate the full scope of the invention" is not an
Appeal No. 2005-0841
Application No. 08/230,083
A-30
uncommon defect in claiming an invention. In re Wilder,
736 F.2d 1516, 1519, 222 USPQ 369, 371 (Fed. Cir. 1984),
cert. denied, 469 U.S. 1209 . . . (1985). However, the
reissue procedure does not give the patentee "a second
opportunity to prosecute de novo his original
application," In re Weiler, 790 F.2d 1576, 1582,
229 USPQ 673, 677 (Fed. Cir. 1986).
The deliberate cancellation of a claim of an
original application in order to secure a
patent cannot ordinarily be said to be an
"error" and will in most cases prevent the
applicant from obtaining the cancelled claim by
reissue. The extent to which it may also
prevent him from obtaining other claims
differing in form or substance from that
cancelled necessarily depends upon the facts in
each case and particularly on the reasons for
the cancellation.
In re Willingham, 282 F.2d 353, 357, 127 USPQ 211, 215
(CCPA 1960).
If a patentee tries to recapture what he or she
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 matter
withdrawn." Haliczer v. United States, 356 F.2d 541,
545, 148 USPQ 565, 569 (Ct. Cl. 1966). "The recapture
rule bars the patentee from acquiring, through reissue,
claims that are of the same or of broader scope than
those claims that were cancelled from the original
application." Ball Corp., 729 F.2d at 1436, 221 USPQ at
295 (citations omitted).
The reissue claims before the court in Mentor were narrower in some
respects than the canceled claims and broader in others respects
than the canceled claims. The court in Mentor asserted (998 F.2d
at 996, 27 USPQ2d at 1525) that reissue claims that are broader in
certain respects and narrower in others than the surrendered
Appeal No. 2005-0841
Application No. 08/230,083
A-31
subject matter may avoid the effect of the recapture rule; thus, if
a reissue claim is broader in a way that does not attempt to
reclaim what was surrendered earlier, the recapture rule may not
apply. The court in Mentor held that the reissue claims did not
avoid the recapture rule since
the reissue claims are broader than the original patent
claims in a manner directly pertinent to the subject
matter surrendered during prosecution. Mentor thus
attempted to reclaim what it earlier gave up. Moreover,
the added limitations do not narrow the claims in any
material respect compared with their broadening.
Id.
Appeal No. 2005-0841
Application No. 08/230,083
43 As such, claim 49 does not fall into either Clement's principle
(3)(a) or principle (3)(b). Claim 49 does fall into principle (3) of Clement
wherein the reissue claims are broader than the surrendered subject matter in
some aspects, but narrower than the surrendered subject matter in others, thus
requiring the broadening aspects of the reissue claims to be balanced against the
narrowing aspects of the reissue claims to determine if the recapture rule bars
the claims.
A-32
Appendix 9
The court in Clement, 131 F.3d at 1470-71, 45 USPQ2d at
1165-66, held that reissue claim 49 was both broader and narrower
in areas relevant to the prior art rejections.43 Comparing reissue
claim 49 with claim 42 before the May 1988 and June 1987
amendments, the court found that claim 49 was narrower in one area,
namely, the brightness is "at least 59 ISO in the final pulp."
This narrowing related to a prior art rejection because, during the
prosecution of the '179 patent, Clement added this brightness
limitation in an effort to overcome Burns. The court's comparison
also revealed that reissue claim 49 was broader in that it
eliminates the room temperature and specific energy limitations of
step (a), and the temperature, specific energy, and pH values of
steps (c) and (d). This broadening directly related to several
prior art rejections because, in an effort to overcome Ortner,
Clement added to step (a) the limitation that it is carried out "at
room temperature," and applies "specific mechanical energy lower
than 50 KW.H/Ton to form a pumpable slurry." On balance, the court
Appeal No. 2005-0841
Application No. 08/230,083
A-33
held that reissue claim 49 was broader than it was narrower in a
manner directly pertinent to the subject matter that Clement
surrendered throughout the prosecution and accordingly the court
affirmed the board's decision to sustain the examiner's rejection
of claim 49 under 35 U.S.C. § 251 based on the recapture rule.
The court in Hester, 142 F.3d at 1479-84, 46 USPQ2d at
1647-51 provided:
In considering the "error" requirement, we keep in
mind that the reissue statute is "based on fundamental
principles of equity and fairness, and should be
construed liberally." In re Weiler, 790 F.2d 1576,
1579, 229 USPQ 673, 675 (Fed. Cir. 1986). We also keep
in mind that "not every event or circumstance that might
be labeled 'error' is correctable by reissue." Id.
Indeed, the reissue procedure does not give the patentee
the right "to prosecute de novo his original
application." Id. at 1582, 790 F.2d 1576, 229 USPQ at
677; see also Mentor Corp. v. Coloplast, Inc., 998 F.2d
992, 995, 27 USPQ2d 1521, 1524 (Fed. Cir. 1993).
One of the most commonly asserted "errors" in support
of a broadening reissue is the failure of the patentee's
attorney to appreciate the full scope of the invention
during the prosecution of the original patent
application. See Amos, 953 F.2d at 616, 21 USPQ2d at
1273; In re Wilder, 736 F.2d 1516, 1519, 222 USPQ 369,
371 (Fed. Cir. 1984). This form of error has generally
been accepted as sufficient to satisfy the "error"
requirement of § 251. See Clement, 131 F.3d at 1468, 45
USPQ2d at 1163; Wilder, 736 F.2d at 1519, 222 USPQ at
371. Williams asserted this form of error as the basis
for his reissue applications, and the Patent Office
accepted his assertion as adequate.
However, the district court concluded that there was
no such error by Williams' attorney. Hester, 963 F.
Supp. at 1411. In reaching this conclusion, the court
was particularly persuaded by the prosecution history of
the original patent. The court concluded that the
attorney's repeated attempts to distinguish Williams'
Appeal No. 2005-0841
Application No. 08/230,083
A-34
invention on the basis of the "solely with steam" and
"two sources of steam" limitations belied Williams'
assertion that his attorney failed to appreciate the full
scope of his invention. Id. at 1409-11. The court also
determined that there was no other form of § 251 "error"
and thus held the asserted reissue claims invalid. Id.
at 1411-12.
2
We share the district court's discomfort with
Williams' attempt to remove, through reissue, the "solely
with steam" and "two sources of steam" limitations after
having relied so heavily on those limitations to obtain
allowance of the original patent claims over the prior
art. This concern is addressed most squarely by the
"recapture rule," recently discussed at length in
Clement, 131 F.3d 1464, 45 USPQ2d 1161. The recapture
rule "prevents a patentee from regaining through reissue
. . . subject matter that he surrendered in an effort to
obtain allowance of the original claims." Clement, 131
F.3d at 1468, 45 USPQ2d at 1164. The rule is rooted in
the "error" requirement in that such a surrender is not
the type of correctable "error" contemplated by the
reissue statute. See Mentor, 998 F.2d at 995-96, 27
USPQ2d at 1525.
In its motion for summary judgment, Stein presented
the recapture rule as one basis for finding the asserted
reissue claims invalid, and Stein repeats this argument
on appeal as one basis for affirming the summary judgment
of invalidity. While the district court did not
explicitly rule on this ground, its opinion indicates the
view that Hester, through the reissue patents, recaptured
surrendered subject matter. Hester, 963 F. Supp. at 1412
(stating that through the reissues, Hester obtained
claims covering "ovens with characteristics repeatedly
distinguished and disclaimed in the PTO" and that was
contrary to the "error" requirement of § 251). As will
be next explained, we conclude that the asserted reissue
claims violate the recapture rule and that the summary
judgment ruling is appropriately affirmed on this ground.
"Under [the recapture] rule, claims that are 'broader
than the original patent claims in a manner directly
pertinent to the subject matter surrendered during
prosecution' are impermissible." Clement, 131 F.3d at
1468, 45 USPQ2d at 1164 (quoting Mentor, 998 F.2d at 996,
Appeal No. 2005-0841
Application No. 08/230,083
A-35
27 USPQ2d at 1525). Application of the recapture rule
begins with a determination of whether and in what
respect the reissue claims are broader than the original
patent claims. See id. A reissue claim that does not
include a limitation present in the original patent
claims is broader in that respect. See id. Here, it is
undisputed that the asserted reissue claims are broader
than the original patent claims in that the reissue
claims do not include the "solely with steam" and "two
sources of steam" limitations found in each of the
original patent claims.
Having determined that the reissue claims are broader
in these respects, under the recapture rule we next
examine whether these broader aspects relate to
surrendered subject matter. See id. at 1468-69, 131 F.3d
1464, 45 USPQ2d at 1164. "To determine whether an
applicant surrendered particular subject matter, we look
to the prosecution history for arguments and changes to
the claims made in an effort to overcome a prior art
rejection." Id. at 1469, 131 F.3d 1464, 45 USPQ2d at
1164 (emphasis added). This statement in Clement
indicates that a surrender can occur by way of arguments
or claim changes made during the prosecution of the
original patent application. To date, the cases in which
this court has found an impermissible recapture have
involved claim amendments or cancellations. See, e.g.,
id. at 1469-70, 131 F.3d 1464, 45 USPQ2d at 1164-65;
Mentor, 998 F.2d at 995-96, 27 USPQ2d at 1524-25.
However, in addition to the suggestion in Clement that
argument alone can effect a surrender, this court
expressly left open that possibility in Ball Corp. v.
United States: "If reissue is sought where claims have
not been previously canceled, analysis becomes more
difficult. In that case relative claim scope is not
available to illuminate the alleged error. We are not
faced with that situation in this proceeding." 729 F.2d
1429, 1436 n.19, 221 USPQ 289, 295 n.19 (Fed. Cir. 1984).
Prior to this case, this court has not squarely addressed
the question.
. . . .
Thus we conclude that, in a proper case, a surrender
can occur through arguments alone. We next evaluate
whether such a surrender occurred here with respect to
the "solely with steam" and "two sources of steam"
Appeal No. 2005-0841
Application No. 08/230,083
A-36
limitations, the pertinent aspects in which the asserted
reissue claims are broader than the original patent
claims. The obvious conclusion is that there has been a
surrender.

. . . .
Having concluded that there has been a surrender, we
must next determine whether the surrendered subject
matter has crept back into the asserted reissue claims.
See Clement, 131 F.3d at 1469, 45 USPQ2d at 1164. When
the surrender occurs by way of claim amendment or
cancellation, "[c]omparing the reissue claim with the
canceled claim is one way to do this." See id. This
analysis is not available when the surrender is made by
way of argument alone. Instead, in this case, we simply
analyze the asserted reissue claims to determine if they
were obtained in a manner contrary to the arguments on
which the surrender is based.
Clearly they were. None of the asserted reissue
claims include either the "solely with steam" limitation
or the "two sources of steam" limitation. Thus, this
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. The asserted
reissue claims are unmistakably broader in these
respects.
Finally, because the recapture rule may be avoided in
some circumstances, we consider whether the reissue
claims were materially narrowed in other respects. See,
e.g., Mentor, 998 F.2d at 996, 27 USPQ2d at 1525
("Reissue claims that are broader in certain respects and
narrower in others may avoid the effect of the recapture
rule."); Clement, 131 F.3d at 1470, 45 USPQ2d at 1165.
For example, in Ball the recapture rule was avoided
because the reissue claims were sufficiently narrowed
(described by the court as "fundamental narrowness")
despite the broadened aspects of the claims. 729 F.2d
at 1438, 221 USPQ at 296. In the context of a surrender
by way of argument, this principle, 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 through reissue a scope of protection to which
he is rightfully entitled for such overlooked aspects.
Appeal No. 2005-0841
Application No. 08/230,083
A-37
However, this is not such a case. The asserted
reissue claims are not materially narrower, despite
Hester's arguments to the contrary. Hester argues that
the claims are materially narrower by the addition of the
"spiral conveyance path" and "high humidity steam"
limitations. The term "high humidity steam" is included
in each of the asserted reissue claims except reissue
claim 30 of the '259 reissue patent. However, the term
"high humidity steam" is actually the same as or broader
than the limitation in original claim 1 that this term
replaced. Original claim 1 specifies a steam atmosphere
"at near 100% humidity 100° C and a pressure above
atmospheric." '047 patent, col. 6, ll. 3-4. Hester
concedes that the term "high humidity steam" is not
narrower than this limitation in original claim 1. In
fact, with respect to the claim construction issue,
Hester argues that the limitation in original claim 1 is
but one example of "high humidity steam." Accordingly,
the use of the term "high humidity steam" does not save
the reissue claims from the recapture rule.
The term "spiral conveyance path" is also not
materially limiting. This term appears explicitly in
asserted reissue claims 28, 32, 75, and 76 of the '259
reissue patent; it does not appear explicitly in the
other reissue claims asserted. Original claim 1 includes
a corresponding limitation, namely, "means passing said
conveyor belt through said housing. . . ." This is a
so-called means-plus-function clause drafted pursuant to
35 U.S.C. § 112 ¶ 6 (1994). [Footnote omitted]. According
to § 112 ¶ 6, the clause is to be construed to "cover the
corresponding structure . . . described in the
specification and equivalents thereof." The only
corresponding structure described in the specification
(more properly, the written description of the patent)
passes the conveyor belt through a spiral path. See '047
patent, col. 4, l. 64 to col. 5, l. 8. Thus, the
explicit recitation of a "spiral conveyance path" in some
of the asserted reissue claims does not materially narrow
those claims. Indeed, Hester does not explain how the
explicit recitation of a spiral conveyance path--which is
present in prior art cookers cited by the examiner during
the prosecution of the original patent--materially
narrows these claims. In sum, neither alone nor together
do the terms "high humidity steam" and "spiral conveyance
path" materially narrow the claims.
Appeal No. 2005-0841
Application No. 08/230,083
A-38
Furthermore, the "spiral conveyance path" and "high
humidity steam" limitations are not aspects of the
invention that were overlooked during prosecution of the
original patent. To the contrary, as just explained,
these aspects were included in original claim 1.
Additionally, with regard to the "spiral conveyance path"
limitation, original dependent claim 12 explicitly
recites "a spiral path." '047 patent, col. 6, l. 60. In
prosecuting the original patent, Williams pointed out
these features in an attempt to overcome the Examiner's
obviousness rejection. Hester cannot now argue that
Williams overlooked these aspects during the prosecution
of the original patent application. In conclusion, this
is not a case which involves the addition of material
limitations that overcome the recapture rule.
In effect, Hester, through eight years of reissue
proceedings, prosecuted Williams' original patent
application anew, this time placing greater emphasis on
aspects previously included in the original patent claims
and removing limitations repeatedly relied upon to
distinguish the prior art and described as "critical" and
"very material" to the patentability of the invention.
The reissue statute is to be construed liberally, but not
that liberally. The realm of corrections contemplated
within § 251 does not include recapturing surrendered
subject matter, without the addition of
materially-narrowing limitations, in an attempt to
'custom-fit' the reissue claims to a competitor's
product.
No doubt if two patent attorneys are given the task of
drafting patent claims for the same invention, the two
attorneys will in all likelihood arrive at somewhat
different claims of somewhat different scope. And such
differences are even more likely when, as here, the
second attorney drafts the new claims nearly a decade
later and with the distinct advantage of having before
him the exact product offered by the now accused
infringer. This reality does not justify recapturing
surrendered subject matter under the mantra of "failure
to appreciate the scope of the invention." The
circumstances of the case before us simply do not fit
within the concept of "error" as contemplated by the
reissue statute. See Mentor, 998 F.2d at 996, 27 USPQ2d
at 1525 ("Error under the reissue statute does not
include a deliberate decision to surrender specific
Appeal No. 2005-0841
Application No. 08/230,083
A-39
subject matter in order to overcome prior art, a decision
which in light of subsequent developments in the
marketplace might be regretted.").
With respect to the recapture issue, there are no
underlying material facts as to which there is a genuine
issue in dispute. The original patent's prosecution
history, on which we rely, is before us and undisputed.
All that remains is the ultimate legal conclusion as to
whether the asserted reissue claims fail to meet the
"error" requirement because the claims impermissibly
recapture surrendered subject matter. See id. at 994, 998
F.2d 992, 27 USPQ2d at 1524 (stating that whether the
"error" requirement has been met is a legal conclusion).
For the reasons explained above, we conclude as a matter
of law that the asserted reissue claims fail in this
regard. Summary judgment of invalidity of the asserted
reissue claims under § 251 is called for. Accordingly,
we affirm the district court's entry of summary judgment.

The court in Pannu, 258 F.3d at 1370-71, 59 USPQ2d at 1600,
expressly endorses the process for applying the recapture rule set
forth in Clement and Hester. Specifically, according to Pannu:
[t]he first step is to "determine whether and in what
'aspect' the reissue claims are broader than the patent
claims." Id. [citing to Clement, 131 F.3d at 1468, 45
USPQ2d at 1164]. “The second step is to determine
whether the broader aspects of the reissued claim related
to surrendered subject matter.” Id. [citing to Clement,
131 F.3d at 1468, 45 USPQ2d at 1164]. Finally, the court
must determine whether the reissued claims were
materially narrowed in other respects to avoid the
recapture rule.
Id. at 1371, 59 USPQ2d at 1600 (citations omitted). The Federal
Circuit applied the test set forth in Clement in analyzing the
facts in Pannu as follows.
Appeal No. 2005-0841
Application No. 08/230,083
A-40
Pannu’s application was directed to an artificial intraocular
lens comprising a round lens called an "optic" that focuses light
on the retina, two or more elements called "haptics" that are
attached to the optic, and "snag resistant" discs attached at the
end of the haptics. In applying the first step of the test set
forth in Clement to the facts therein, the Pannu court determined
that reissue claim 1 was broader than patent claim 1 with respect
to the shape of the haptics, in that the reissue claim eliminated
the limitation that the haptics ("elements") define "a continuous,
substantially circular arc having a diameter greater than the
diameter of said lens body, said arc curved toward said lens
circumference."
In order to determine whether the broader aspect of the
reissue claim related to surrendered subject matter, the Federal
Circuit in Pannu looked to the prosecution history of the original
patent application. A review of the prosecution history revealed
that original claims 1-14 presented in the patent application were
rejected by the examiner as obvious under 35 U.S.C. § 103 in light
of four prior art references. None of the original claims limited
the shape of the haptics. In response to that rejection, Pannu
filed an amendment canceling claims 1-7 and 10-14, adding new
claims 16-22 and amending claims 8 and 9 to depend from claim 16.
Appeal No. 2005-0841
Application No. 08/230,083
44 This amendment results in originally presented claim 16 also being
surrendered subject matter. See Clement, 131 F.3d at 1471, 45 USPQ2d at 1166
(applicant abandoned the subject matter of claim 42, as it existed before the
examiner’s amendment, because he allowed the examiner to amend it to obtain
allowance and no other evidence suggested that there was no intent to abandon
it).
A-41
Independent claim 16 recited the haptics (elements) as "defining a
continuous substantially circular arc having a diameter greater
than the diameter of the lens body, said arc curved toward said
lens circumference." The examiner made amendments to claim 16
setting forth structural details of the haptics and the amended
claim 16 issued as patent claim 1.44 The Federal Circuit
determined that
[t]he addition of the "continuous, substantially circular
arc" limitation to claim 16 and the statements made by
Pannu to the examiner during prosecution of the '855
patent limited the claim to exclude an interpretation
that did not include a continuous, substantially circular
arc. The shape of the haptics was broadened during
reissue and was the same subject matter that was
surrendered during prosecution. [Pannu, 258 F.3d at 1371,
59 USPQ2d at 1600 (citations omitted)].
Accordingly, the Federal Circuit concluded that this broadened
aspect of the reissue claim related to surrendered subject matter.
The reissue claims in Pannu were also narrower than both claim
16 in the patent application prior to the examiner’s amendments and
patent claim 1, in that the reissue claims changed the recitation
that the length of the haptics was "substantially greater" than the
width of the haptics to "at least three times greater" than the
Appeal No. 2005-0841
Application No. 08/230,083
45 The district court in the Pannu case determined that the three times
greater width limitation and coplanar limitation were contained in or similar to
parallel terminology in originally filed claim 1 and remained in a dependent
claim throughout prosecution of the patent and thus were not overlooked aspects
of the original patent. Moreover, the change from substantially greater to three
times greater was not a material alteration, according to the district court.
Thus, the district court concluded that neither limitation materially narrowed
the claim. Pannu v. Storz Instruments, Inc., 106 F. Supp. 2d 1304, 1308 (S.D.
Fla. 2000).
A-42
width of the haptics and added the limitation that the snag
resistant means must be "substantially coplanar" with the haptics.
The Federal Circuit reasoned that, since the narrowing aspect of
the claim was directed to the positioning and dimensions of the
snag resistant means and not to the shape of the haptics (the
broadened aspect), "the reissued claims were not narrowed in any
material aspect compared with their broadening."45 Pannu, 258 F.3d
at 1372, 59 USPQ2d at 1600-01. The Federal Circuit added that
"[f]urthermore, 'if the patentee is seeking to recover subject
matter that had been surrendered during the initial prosecution
this flexibility of analysis is eliminated, for the prosecution
history establishes the substantiality of the change and estops its
recapture.' Anderson v. Int’l Eng’g & Mfg., Inc., 160 F.3d 1345,
1349, 48 USPQ2d 1631, 1634 (Fed. Cir. 1998)." Pannu, 258 F.3d at
1372, 59 USPQ2d at 1601. The court ended the decision by stating
that "[o]n reissue, he [Pannu] is estopped from attempting to
recapture the precise limitation he added to overcome prior art
rejections" (id.).
Appeal No. 2005-0841
Application No. 08/230,083
A-43
A precedential opinion concerning a reissue recapture
rejection under 35 U.S.C. § 251 was entered by the Board of Patent
Appeals and Interferences on May 29, 2003 in Ex parte Eggert, 67
USPQ2d 1716 (Bd. Pat. App. & Int. 2003). In Eggert, the majority
opinion applied the fact-specific analysis set forth in Clement
and determined that under the facts and circumstances before it,
the "surrendered subject matter" was claim 1 of Eggert as that
claim existed prior to the post-final rejection amendment that led
to the allowance of claim 1 in the original patent, and decided
that reissue claims 15-22 of Eggert were not precluded (i.e.,
barred) by the "recapture rule." 67 USPQ2d at 1730-33.
In North American Container, 415 F.3d at 1349-50, 75 USPQ2d at
1556-57, the court again followed the analytical process of Clement
and found that the "recapture rule" applied. Specifically, the
court stated:
Under the recapture rule, a patentee is precluded "from
regaining the subject matter that he surrendered in an effort
to obtain allowance of the original claims." Id. at 1370-71
[citing to Pannu v. Storz Instruments, Inc., 258 F.3d 1366, 59
USPQ2d 1597 (Fed. Cir. 2001)] (citing In re Clement, 131 F.3d
1464, 1468 [45 USPQ2d 1161, 1164] (Fed. Cir. 1997)). When
that has occurred, the patent is invalid. Id. at 1368. We
apply the recapture rule as a three-step process: (1) first,
we determine whether, and in what respect, the reissue claims
are broader in scope than the original patent claims; (2)
next, we determine whether the broader aspects of the reissue
claims relate to subject matter surrendered in the original
prosecution; and (3) finally, we determine whether the reissue
claims were materially narrowed in other respects, so that the
Appeal No. 2005-0841
Application No. 08/230,083
A-44
claims may not have been enlarged, and hence avoid the
recapture rule. Id. at 1371 (citations omitted).
NAC appeals from the district court’s summary judgment
holding reissue claims 29-42 invalid for violation of the
recapture rule. According to NAC, the court improperly
grounded its invalidity decision on the applicant’s
arguments and amendments in view of the prior art
Dechenne patent and rendered an unduly narrow
interpretation of the "generally convex" claim
limitation. In doing so, NAC argues mainly that the
court failed to give the patent examiner "the deference
that is due to a qualified government agency presumed to
have properly done its job." Appellant’s Opening Br., at
50 (citing McGinley v. Franklin Sports, Inc., 262 F.3d
1339, 1353 [60 USPQ2d 1001] (Fed. Cir. 2001)). According
to NAC, during the reissue proceedings, Plastipak
submitted, and the patent examiner rejected, protests
making the same recapture arguments that Plastipak made
to the court.
Plastipak argues that the applicant violated the
recapture rule by removing in the reissue proceedings the
"generally convex" restriction from the "inner wall"
limitation. According to Plastipak, the applicant
amended his claims to add the "generally convex"
limitation to the inner walls in order to overcome the
Dechenne patent, which was "slightly concave." With
respect to NAC’s argument that the district court did not
give the patent examiner due deference, Plastipak
reasserts the court’s position that the patent examiner
misapplied the recapture rule, and thus any presumption
that the examiner properly did his job was rebutted.
We agree that NAC violated the recapture rule, and
thus the reissue claims are invalid. Applying our
three-part test, we find that the reissue claims are
broader in scope than the originally-issued claims in
that they no longer require the "inner walls" to be
"generally convex." Moreover, the broader aspect of the
reissue claims relates to subject matter that was
surrendered during prosecution of the original-filed
claims. Indeed, during prosecution, the applicant
conceded that the pending independent claims "have been
amended to refer to the convex nature of the inner wall
portions of the central re-entrant portion." '607
Application, Paper No. 6, at 10. The applicant even
argued that the "shape of the base as now defined in the
Appeal No. 2005-0841
Application No. 08/230,083
A-45
claims differs from those of . . . the Dechenne patent,
wherein the corresponding wall portions are slightly
concave." Id. (emphasis added). Finally, the reissue
claims were not narrowed with respect to the "inner wall"
limitation, thus avoiding the recapture rule.
We reject NAC’s argument that the district court did
not give the patent examiner due deference in finding the
reissue claims invalid. The examiner’s basis for denying
the protests filed against the reissue claims, i.e., that
the claims "are considered to be of intermediate scope
and the deleted language . . . directed to the convexity
of the inner wall . . . are not considered to be critical
limitations," demonstrates the examiner’s inattention to
the rule against recapture. '918 Application, Paper No.
29, at 4. For the reasons set forth above, the deleted
language was critical in that it allowed the applicant to
overcome the Dechenne reference. Moreover, that the
reissue claims, looked at as a whole, may be of
"intermediate scope" is irrelevant. As the district
court recognized, the recapture rule is applied on a
limitation-by-limitation basis, and the applicant’s
deletion of the "generally convex" limitation clearly
broadened the "inner wall" limitation. Thus, reissue
claims 29-42 are invalid for violating the rule against
recapture.