Appeal No. 2005-0841
Application No. 08/230,083
is broader "in a manner directly pertinent to the subject matter
. . . surrendered throughout the prosecution." Id. at 1471,
45 USPQ2d at 1166.
The last step is to determine whether the surrendered
subject matter has crept into the rejected reissue claim. In
what aspects, if any, is the reissue claim narrower than the
canceled, or rejected, claim.
Claim 14 is narrower than original patent application
claim 10 (which corresponds to patent claim 9) in that it
includes "[a] second clip connection comprising a second springy
tongue integral with the surrounding wall" and the first springy
tongue is "spaced from the wall." These limitations do not
relate to either the inner frame limitation or the dovetail guide
limitation. In other words, each narrowing limitation is "an[]
aspect completely unrelated to the rejection," Id. at 1470, 45
USPQ2d at 1165, in that it does not narrow the claim regarding
the specific subject matter of either the inner frame or the
dovetail guide. Thus, since claim 14 is as broad as original
patent application claim 10 in an aspect germane to a prior art
rejection (i.e., the limitation added to overcome the reference),
by including neither the inner frame limitation nor the dovetail
guide limitation, and narrower than original patent application
-64-
Page: Previous 57 58 59 60 61 62 63 64 65 66 67 68 69 70 71 Next
Last modified: November 3, 2007