Appeal No. 2005-0841
Application No. 08/230,083
to a prior art rejection because, during the prosecution of the
'179 patent, Clement added this brightness limitation in an effort
to overcome a prior art rejection. The court's comparison also
revealed that reissue claim 49 was broader than claim 42 before the
amendments thereto which made claim 42 allowable in that it
eliminates the room temperature and specific energy limitations of
step (a), and the temperature, specific energy, and pH values of
steps (c) and (d). The court found that this broadening directly
related to several prior art rejections because, in an effort to
overcome the applied prior art Clement added to step (a) the
limitation that it is carried out "at room temperature," and
applies "specific mechanical energy lower than 50 KW.H/Ton to form
a pumpable slurry." On balance, the court held that reissue claim
49 was broader than it was narrower in a manner directly pertinent
to the subject matter that Clement surrendered throughout the
prosecution and accordingly the court affirmed the board's decision
to sustain the examiner's rejection of claim 49 under 35 U.S.C.
§ 251 based on the recapture rule.
Our view is consistent with Pannu v. Storz Instruments Inc.,
258 F.3d 1366, 1370-71, 59 USPQ2d 1597, 1600 (Fed. Cir. 2001). In
Pannu the court stated that "[o]n reissue, [Pannu] is estopped from
attempting to recapture the precise limitation he added to overcome
prior art rejections." 258 F.3d at 1372, 59 USPQ2d at 1601. This
statement may, when viewed in complete isolation, appear to provide
-80-
Page: Previous 73 74 75 76 77 78 79 80 81 82 83 84 85 86 87 Next
Last modified: November 3, 2007