Appeal 2006-3236
Inter Partes Reexamination Control No. 95/000,006
not have the same meaning as "away from a first wall surface of said main
body" as in original claim 1. Right of Appeal Notice 17-18.
Patent Owners argue that the test for broadening is not whether the
claim has the same meaning. It is argued that claim 16 contains all the
features of issued claim 1, with a mere rephrasing of terminology (Patent
Owners' Br. 21):
In particular, this rejection is improper because claim 16
describes the second wall surface as extending from the first wall
surface. One skilled in the art would acknowledge that a second wall
surface extending from a first wall surface means that the second wall
surface extends away from the first wall surface. The fact that
claim 16 also describes the second wall surface as extending in a
direction away from the bottom surface of the first storage portion
does not result in claim 16 being broader than claim 1.
We note that claim 16 does not recite extending from a "bottom surface."
Requester responds that claim 16 is broader than claim 1 in that it no
longer requires the "second wall surface" to extend "in a direction away
from said first wall surface" (Requester's Br. 21). It is argued that Patent
Owners' argument that the claims have the same meaning contradicts the
claim construction axiom that each claim element is material (id.).
Patent Owners argue that a "second wall surface that extends 'from' a
first wall surface inherently means that the second wall surface extends
'away' from the first wall surface and therefore the features of claim 16
would not be afforded a broader scope than those of claim 1 in the
reexamined patent" (Patent Owners' Rebuttal Br. 9).
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