Appeal No. 2005-0841
Application No. 08/230,083
broadened during reissue and that this was the same subject matter
that was surrendered during prosecution. The reissue claims were
also narrower than both claim 16 in the patent application prior to
the examiner’s amendments and patent claim 1, in that the reissue
claims changed the recitation that the length of the haptics was
"substantially greater" than the width of the haptics to "at least
three times greater" than the width of the haptics and added the
limitation that the snag resistant means must be "substantially
coplanar" with the haptics. The Federal Circuit then balanced the
broadening of the surrendered subject matter against the narrowing
of the surrendered subject matter and concluded that "the reissued
claims were not narrowed in any material aspect compared with their
broadening." Pannu, 258 F.3d at 1372, 59 USPQ2d at 1601. As such,
Pannu was estopped from attempting to recapture the precise
limitation he added (i.e., the "continuous, substantially circular
arc" limitation) to overcome prior art rejections. The Federal
Circuit added that "[f]urthermore, ‘if the patentee is seeking to
recover subject matter that had been surrendered during the initial
prosecution this flexibility of analysis is eliminated, for the
prosecution history establishes the substantiality of the change
and estops its recapture.’ Anderson v. Int’l Eng’g & Mfg., Inc.,
160 F.3d 1345, 1349, 48 USPQ2d 1631, 1634 (Fed. Cir. 1998)."
Pannu, 258 F.3d at 1372, 59 USPQ2d at 1601. We understand this
language, consistent with the prior precedent of the Federal
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