Appeal No. 2005-0841
Application No. 08/230,083
Appendix 9
The court in Clement, 131 F.3d at 1470-71, 45 USPQ2d at
1165-66, held that reissue claim 49 was both broader and narrower
in areas relevant to the prior art rejections.43 Comparing reissue
claim 49 with claim 42 before the May 1988 and June 1987
amendments, the court found that claim 49 was narrower in one area,
namely, the brightness is "at least 59 ISO in the final pulp."
This narrowing related to a prior art rejection because, during the
prosecution of the '179 patent, Clement added this brightness
limitation in an effort to overcome Burns. The court's comparison
also revealed that reissue claim 49 was broader 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). This broadening directly related to several
prior art rejections because, in an effort to overcome Ortner,
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
43 As such, claim 49 does not fall into either Clement's principle
(3)(a) or principle (3)(b). Claim 49 does fall into principle (3) of Clement
wherein the reissue claims are broader than the surrendered subject matter in
some aspects, but narrower than the surrendered subject matter in others, thus
requiring the broadening aspects of the reissue claims to be balanced against the
narrowing aspects of the reissue claims to determine if the recapture rule bars
the claims.
A-32
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