Appeal No. 2004-0659
Application No. 09/111,978
1649. Similarly, in Pannu, where a limitation added to overcome a prior art rejection was
removed in a reissue application, The Court 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 AG 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, 59 USPQ2d at 1600. Thus, according to the recent case law, the subject matter
surrendered is any claim that does not include the limitations added during the
prosecution of the original patent application.
We note that the Court in Pannu, Hester, and North American Container
recognized that after determining what subject matter was surrendered they still needed to
consider whether the claims were materially narrowed in other respects. See Hester, 46
USPQ2d at 1649, and Pannu, 59 USPQ2d at 1601. Accordingly, having determined that
the subject matter surrendered is all claims which do not include the limitations of (1)
that the object moves relative to the projector "at a substantially constant velocity," and
(2) that the detector elements "are substantially uniformly spaced," we must consider
whether the claims have been materially narrowed. Appellant argues two limitations are
materially narrower than the patent claims.
First, appellant asserts (Brief, page 10) that the reissue claims "are substantially
narrower in a manner directly material to the rejection AND are different than those
claims surrendered in Applicant's amendment in the parent application, and distinguish
from the art overcome in the parent application." Specifically, appellant (Brief, pages 11-
12 and 15) asserts that claim 30, for example, images the same area of the object onto
first, second, and third detector elements at first, second, and third phases, respectively,
of the pattern of light. Appellant urges that this is:
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