Appeal No. 2004-0659
Application No. 09/111,978
surrendered during prosecution. The Court in Pannu explained that as originally filed,
none of the claims in the application limited the shape of the haptics and that Pannu filed
an amendment defining the shape of the haptics after the examiner rejected the claims as
obvious. Similarly, none of appellant's original claims limited the movement of the
object relative to the projector to a "substantially constant velocity" nor the detector
elements to be "uniformly spaced," and appellant filed an amendment adding the above-
noted limitations after the examiner rejected the claims as obvious. Pannu argued to the
examiner that none of the applied references taught the shape recited in the amendment.
Similarly, appellant argued to the examiner that none of the applied references taught
substantial constant velocity or uniform spacing. We note that appellant contends
(Request for Rehearing, page 4) that “when his attorney added limitations during
prosecution, [appellant] did not argue that the limitations added were ‘critical’ to
patentability.” However, the argument that the limitations were not in the references
constitutes a reliance upon the limitations for patentability. The Court in Pannu
concluded that Pannu's argument that the broadening did not relate to subject matter
surrendered during prosecution was "without merit." Pannu, 59 USPQ2d at 1600. We
likewise find appellant's arguments that the broadening did not relate to the rejection, or
rather to subject matter surrendered, to be without merit.
Additionally, as explained by the Court in Hester, 46 USPQ2d at 1648, both
amendments and arguments made to overcome prior art evidence a surrender. Here,
appellant, in the amendment that resulted in issuance of the patent upon which this
reissue application is based, added the limitations "at a substantially constant velocity"
and "which are substantially uniformly spaced" and argued that they distinguished over
the prior art. Therefore, the broadening, or omission of those limitations, is very much
germane to the rejection and, thus, surrendered subject matter.
Appellant further contends (Brief, pages 10-11) that “the subject matter
surrendered during prosecution of the parent application is that of the original claims,"
not "all claims that do not have some specific limitation added by amendment."
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