Appeal No. 2005-0841
Application No. 08/230,083
width of the haptics and added the limitation that the snag
resistant means must be "substantially coplanar" with the haptics.
The Federal Circuit reasoned that, since the narrowing aspect of
the claim was directed to the positioning and dimensions of the
snag resistant means and not to the shape of the haptics (the
broadened aspect), "the reissued claims were not narrowed in any
material aspect compared with their broadening."45 Pannu, 258 F.3d
at 1372, 59 USPQ2d at 1600-01. The Federal Circuit added that
"[f]urthermore, 'if the patentee is seeking to recover subject
matter that had been surrendered during the initial prosecution
this flexibility of analysis is eliminated, for the prosecution
history establishes the substantiality of the change and estops its
recapture.' Anderson v. Int’l Eng’g & Mfg., Inc., 160 F.3d 1345,
1349, 48 USPQ2d 1631, 1634 (Fed. Cir. 1998)." Pannu, 258 F.3d at
1372, 59 USPQ2d at 1601. The court ended the decision by stating
that "[o]n reissue, he [Pannu] is estopped from attempting to
recapture the precise limitation he added to overcome prior art
rejections" (id.).
45 The district court in the Pannu case determined that the three times
greater width limitation and coplanar limitation were contained in or similar to
parallel terminology in originally filed claim 1 and remained in a dependent
claim throughout prosecution of the patent and thus were not overlooked aspects
of the original patent. Moreover, the change from substantially greater to three
times greater was not a material alteration, according to the district court.
Thus, the district court concluded that neither limitation materially narrowed
the claim. Pannu v. Storz Instruments, Inc., 106 F. Supp. 2d 1304, 1308 (S.D.
Fla. 2000).
A-42
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