Appeal 2006-1454
Application 09/004,524
Patent 5,483,421
determine whether the broader aspects of the reissued claim related to
surrendered subject matter.” Finally, the court must determine
whether the reissued claims were materially narrowed in other
respects to avoid the recapture rule.
Id. at 1371, 59 USPQ2d at 1600 (internal citations omitted). The Pannu test
does not include a determination of whether or not a claim of the same scope
was considered during the original prosecution.
Rather, the significant issue before us is whether the limitation of “an
encapsulation material encapsulating said first set of solder connections”
(reissue claim 21), or “encapsulating said first set of solder connections”
(reissue claim 34), “materially narrows” the reissue claim so as to avoid
recapture of originally filed claims 1 and 7. Appellants do not dispute that
originally filed claims 1 and 7 were surrendered by cancellation during
prosecution of the patent application. Appellants do not argue in the brief
that the “encapsulating” limitation materially narrows the reissue claims.
Appellants also argue at page 5 of the Brief that “one must look to the
claim as a whole to see what has been given up.” We agree. However,
based on this argument, Appellants fail to set forth any reason that
establishes that the Examiner erred with respect to the rejection.
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