Appeal No. 2005-0841
Application No. 08/230,083
Accord North American Container, 415 F.3d at 1349, 75 USPQ2d at
1556 ("finally, we determine whether the reissue claims were
materially narrowed in other respects, so that the claims may not
have been enlarged, and hence avoid the recapture rule"); Pannu,
258 F.3d at 1371, 59 USPQ2d at 1600 ("[f]inally, the court must
determine whether the reissued claims were materially narrowed in
other respects to avoid the recapture rule").
We have previously determined that the narrowing aspect of
claim 14 (i.e., "[a] second clip connection comprising a second
springy tongue integral with the surrounding wall") concerns an
expressly disclosed embodiment of the invention which had never
before been claimed. Significantly, neither the plurality nor the
concurring opinions disagree with our determination. It is
undisputed, therefore, that the claim 14 narrowing is an overlooked
aspect of the invention since it had never been claimed in the
original patent application. Further, this claim narrowing is a
material narrowing because it renders claim 14 novel and unobvious
over the prior art of record. To elaborate, claim 14 without its
narrowing aspect would essentially correspond to rejected original
claims 1, 7 or 8 and thus would presumably be unpatentable over the
prior art applied in the rejection of original claims 1, 7 and 8.
Because it is the narrowing aspect only which renders claim 14
patentable over the prior art, it is appropriate to consider this
narrowing to be material.
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