Appeal No. 2004-0659
Application No. 09/111,978
APPLICATION OF THE PERTINENT CASE LAW TO THE CLAIMS ON APPEAL
As stated in Hester, 46 USPQ2d at 1648, "[a]pplication of the recapture rule
begins with a determination of whether and in what respect the reissue claims are broader
than the original patent claims." Clearly, the claims before us are broader than the
original patent claims in that they omit the limitations "at a substantially constant
velocity" and "which are substantially uniformly spaced."
"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." Id. Appellant (Brief, page 11), by directing our attention to step 3(b) of
the Clement test, appears to suggest that the broader aspects do not relate to surrendered
subject matter, as step 3(b) states that the recapture rule does not bar the claim if the
reissue claim is narrower in an aspect germane to a prior art rejection, and broader in an
aspect unrelated to the rejection. Appellant explains (Reply Brief, page 4) that the
broadening in the reissue claims (i.e., the removal of the limitations "at a substantially
constant velocity" and "which are substantially uniformly spaced") is "unrelated to the
rejection . . . since those limitations do not further distinguish the claims from the prior
art, and thus are not pertinent to the original rejection." Appellant alleges (Reply Brief,
page 4) that:
It is the moving of the detector relative to the object, the
light pattern whose relationship remains fixed to the
detector elements in the present claimed invention (not so
in the prior art, in which the pattern of light moves, even of
[sic] the projector does not) that are germane to the
rejection and to the surrendered subject matter.
Thus, appellant concludes that according to Clement, the recapture rule does not bar the
claims.
The facts of the present case parallel the situation in Pannu. Like appellant in the
present case, Pannu argued that the broadening did not relate to subject matter
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