Appeal No. 2005-0841
Application No. 08/230,083
limited support for the majority's rationale in this appeal. In
our view, this statement means only what it says, that is, Pannu is
estopped from attempting to recapture the precise limitation he
added to overcome prior art rejections. We decline to extract from
the above-quoted language in Pannu a generalized rule that a
reissue claim which omits a limitation relied upon during
prosecution of the patent application is per se impermissible under
the recapture rule, regardless of whether the claim has been
materially narrowed in other respects compared to the surrendered
subject matter. Rather, the proper inquiry requires a fact-
specific analysis in each case to determine whether the patentee is
attempting to recapture by reissue subject matter that was
surrendered during the prosecution of the patent application. In
Pannu, reissue claim 1 was broader than the surrendered subject
matter in an aspect germane to the prior art rejection.
Specifically, the addition of limitations to later added claim 16
and statements made by Pannu limited claim 16 to exclude an
interpretation that did not include a continuous, substantially
circular arc. However, claim 16 with the limitation "a continuous,
substantially circular arc" constitutes surrendered subject matter
in Pannu due to the later examiner's amendments to claim 16 setting
forth structural details of the haptics. The Federal Circuit
determined that the deletion of the "continuous, substantially
circular arc" limitation resulted in the shape of the haptics being
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