Appeal No. 2005-0841
Application No. 08/230,083
examiner indicated that the above-noted inner frame and dovetail
guide limitations were allowable over the prior art. In
response, appellant added the inner frame limitation to rejected
claim 1 and the dovetail guide limitation to rejected claim 11 to
overcome the prior art rejection. Since reissue claim 16
includes neither the inner frame limitation nor the dovetail
guide limitation, the limitations that had been added to overcome
a prior art rejection, the reissue claim 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?
As discussed supra, claim 16 is as broad as original patent
application claim 11 in an aspect germane to a prior art
rejection (i.e., the limitation added to overcome the reference),
by not including either the inner frame limitation or the
dovetail guide limitation. Claim 16 is not narrower than
original patent application claim 11 in any respects. Thus,
comparing reissue claim 16 to original patent application
claim 11, claim 16 is "as broad as or broader than the canceled
or amended claim in all aspects." Therefore, according to
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