Appeal No. 2005-0841
Application No. 08/230,083
reissue applicant the right to enlarged claim scope while
providing intervening rights to the public under 35 U.S.C. § 252.14
The majority's affirmance of the claim 14 rejection is based
on the belief that claim 14 recaptures surrendered subject matter
by omitting the original dependent claim 2 limitation which had
been added to original parent independent claim 1 in order to avoid
prior art and thereby obtain patent claim 1. This original claim 2
limitation relates to a surrounding rim with stays which is
disclosed as a "further embodiment" of patentee's invention, (e.g.,
see lines 3-10 in column 2 of the patent).
Significantly, the patent also discloses other embodiments of
the invention which involve various clip connection arrangements
(e.g., see the paragraph bridging columns 1 and 2 as well as lines
37-52 in column 2) including the first and second resilient clip
connections defined by claim 14 (as well as the alternative clip
connection embodiment of patent claim 11). It appears to be the
14 35 U.S.C. § 252, ¶ 2, provides:
A reissued patent shall not abridge or affect the right of any person or that
person's successors in business who, prior to the grant of a reissue, made,
purchased, offered to sell, or used within the United States, or imported into
the United States, anything patented by the reissued patent, to continue the use
of, to offer to sell, or to sell to others to be used, offered for sale, or sold,
the specific thing so made, purchased, offered for sale, used, or imported unless
the making, using, offering for sale, or selling of such thing infringes a valid
claim of the reissued patent which was in the original patent. The court before
which such matter is in question may provide for the continued manufacture, use,
offer for sale, or sale of the thing made, purchased, offered for sale, used, or
imported as specified, or for the manufacture, use, offer for sale, or sale in
the United States of which substantial preparation was made before the grant of
the reissue, and the court may also provide for the continued practice of any
process patented by the reissue that is practiced, or for the practice of which
substantial preparation was made, before the grant of the reissue, to the extent
and under such terms as the court deems equitable for the protection of
investments made or business commenced before the grant of the reissue.
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