Appeal No. 2004-0659
Application No. 09/111,978
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
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
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