Appeal No. 2005-0841
Application No. 08/230,083
In summary, claim 14 avoids the recapture rule because it is
"materially narrower in other overlooked aspects of the invention"
and thereby provides the appellant with "a scope of protection to
which he is rightfully entitled for such overlooked aspects."
Hester, 142 F.3d at 1482-83, 46 USPQ2d at 1650.
Claim 14 is broader than original patent application claim
1036 in the following additional aspect: the limitation "wherein
the clip connection (6) comprises a springy tongue (22') formed
separate from the outer housing (3)" has been deleted.37 Claim 14
is narrower than original patent application claim 10 in the
following aspects: (1) the outer housing having "a surrounding
wall"; and (2) "[a] second clip connection comprising a second
springy tongue integral with the surrounding wall."
Since claim 14 is broader than original patent application
claim 10 in two aspects, and also narrower than original patent
application claim 10 in two aspects, the broadening aspects of
claim 14 must be balanced against the narrowing aspects of claim
14. The broadening aspects are completely unrelated to the prior
art rejection since both limitations were set forth in original
patent application claim 1038 and were met by the prior art applied
36 This is the claim the examiner relied on in the response to argument
section of the Supplemental Examiner's Answer (mailed July 23, 2004). See
footnote 31.
37 See footnote 29.
38 Original patent application claim 10 depended from original patent
application claim 1.
-96-
Page: Previous 89 90 91 92 93 94 95 96 97 98 99 100 101 102 103 Next
Last modified: November 3, 2007