Appeal No. 2005-0841
Application No. 08/230,083
canceled or amended claim,8 . . . ." Id. However, later in the
decision, in analyzing the facts of the case, the Federal Circuit
determined that eliminating limitations that had been added to
overcome prior art rejections rendered the reissue claims broader
"in a manner directly pertinent to the subject matter that
Clement surrendered throughout the prosecution." Id. at 1471,
45 USPQ2d at 1166. In other words, the Federal Circuit appears
to include as "surrendered subject matter" more than merely the
canceled claims; the phrase also encompasses something pertaining
to the limitation added in the original prosecution to overcome a
prior art rejection.
If the broadening is found to relate to surrendered subject
matter, the third and final step of the test is to "determine
whether the surrendered subject matter has crept into the reissue
claim." Id. at 1469, 45 USPQ2d at 1164. In other words, viewing
surrendered subject matter as including more than merely the
finally rejected claim, the third step is to determine whether
the claims have been narrowed in the same aspects, or with
8 We note that the term "amended" generally refers to a claim after an
amendment has been entered. Thus, "canceled or amended" could refer to the claim
prior to or subsequent to amendment. As the amended claim would equate to the
patented claim, thereby rendering the patented claim surrendered, the normal
reading of the term "amended" would seem to be inappropriate. Thus, we will
focus on the "canceled claim," recognizing that the phrase "canceled or amended"
includes something more.
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