Appeal No. 2001-2689
Application No. 09/215,021
A claim is broader in scope than the original claims if it
contains within its scope any conceivable product or process
which would not have infringed the original patent. Thus, a
claim is broadened if it is broader in any one respect even
though it may be narrower in other respects. Tillotson, Ltd. v.
Walbro Corp., 831 F.2d at 1037 n.2, 4 USPQ2d at 1453 n.2.
Therefore, in order to determine whether the reissue claims on
appeal here are broader than patent claim 1, the metes and bounds
of patent claim 1 must first be determined. A review of the file
history of the present application reveals that this has not been
done.3
3Appellant appears to be of the view that because reissue
claim 12 “covers” a particular embodiment within the scope of
patent claim 1 by replacing the “means” limitations of patent
claim 1 with individual structural elements, reissue claim 12
necessarily is narrower in scope than patent claim 1. However,
consider the case of a first claim that includes a 35 U.S.C.
§ 112, sixth paragraph, means-plus-function limitation for
accomplishing a stated function, where the corresponding
structure disclosed in the specification for accomplishing the
claimed function is ABCD, and a second claim that is the same in
all respects as the first claim except that the means-plus-
function limitation is replaced by a specific recitation of
elements ABC for accomplishing the same stated function. The
second claim is broader that the first claim within the meaning
of 35 U.S.C. § 251, notwithstanding the fact that it specifically
recites elements ABC, in that it does not require element D.
However, a different result would follow if it was determined
that the corresponding structure of the means-plus-function
limitation of the first claim was, for example, AB or ABC.
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