Appeal No. 2005-0841
Application No. 08/230,083
application for patent, Pannu argued a distinction of "a
continuous substantially circular arc having a diameter greater
than the diameter of the lens body . . . which significantly
enhance the easy insertibility of applicant's lens and
significantly reduce any possibility of snagging delicate eye
tissue" over the prior art. In the ensuing reissue application,
Pannu eliminated that limitation from the claims, but 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
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