Appeal No. 2005-0841
Application No. 08/230,083
Pannu’s application was directed to an artificial intraocular
lens comprising a round lens called an "optic" that focuses light
on the retina, two or more elements called "haptics" that are
attached to the optic, and "snag resistant" discs attached at the
end of the haptics. In applying the first step of the test set
forth in Clement to the facts therein, the Pannu court determined
that reissue claim 1 was broader than patent claim 1 with respect
to the shape of the haptics, in that the reissue claim eliminated
the limitation that the haptics ("elements") define "a continuous,
substantially circular arc having a diameter greater than the
diameter of said lens body, said arc curved toward said lens
circumference."
In order to determine whether the broader aspect of the
reissue claim related to surrendered subject matter, the Federal
Circuit in Pannu looked to the prosecution history of the original
patent application. A review of the prosecution history revealed
that original claims 1-14 presented in the patent application were
rejected by the examiner as obvious under 35 U.S.C. § 103 in light
of four prior art references. None of the original claims limited
the shape of the haptics. In response to that rejection, Pannu
filed an amendment canceling claims 1-7 and 10-14, adding new
claims 16-22 and amending claims 8 and 9 to depend from claim 16.
A-40
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