Appeal No. 2005-0841
Application No. 08/230,083
Independent claim 16 recited the haptics (elements) as "defining a
continuous substantially circular arc having a diameter greater
than the diameter of the lens body, said arc curved toward said
lens circumference." The examiner made amendments to claim 16
setting forth structural details of the haptics and the amended
claim 16 issued as patent claim 1.44 The Federal Circuit
determined that
[t]he addition of the "continuous, substantially circular
arc" limitation to claim 16 and the statements made by
Pannu to the examiner during prosecution of the '855
patent limited the claim to exclude an interpretation
that did not include a continuous, substantially circular
arc. The shape of the haptics was broadened during
reissue and was the same subject matter that was
surrendered during prosecution. [Pannu, 258 F.3d at 1371,
59 USPQ2d at 1600 (citations omitted)].
Accordingly, the Federal Circuit concluded that this broadened
aspect of the reissue claim related to surrendered subject matter.
The reissue claims in Pannu 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
44 This amendment results in originally presented claim 16 also being
surrendered subject matter. See Clement, 131 F.3d at 1471, 45 USPQ2d at 1166
(applicant abandoned the subject matter of claim 42, as it existed before the
examiner’s amendment, because he allowed the examiner to amend it to obtain
allowance and no other evidence suggested that there was no intent to abandon
it).
A-41
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