Appeal 2006-1865
Application 09/660,433
Patent 5,802,641
narrowing must be in respects other than the broader aspects relating to
surrendered subject matter. Stated differently, a material narrowing in an
overlooked aspect cannot possibly relate to surrendered subject matter since this
subject matter, having been claimed and then surrendered during original
prosecution, could not have been overlooked.
In Pannu, the Federal Circuit stated that “[t]he narrowing aspect of the
claim on reissue … was not related to the shape of the haptics, but rather the
positioning and dimensions of the snag resistant means [, and] [t]herefore, the
reissued claims were not narrowed in any material respect compared to their
broadening.” 258 F.3d at 1372, 59 USPQ2d at 1600-01. If read in a vacuum, this
statement might appear to support a contrary result to our analysis. However, the
court’s opinion in general and this statement in particular must be read, not in a
vacuum but, in light of the facts of the case on appeal.
The reissued claim in Pannu was narrowed by requiring the snag resistant
means to be “at least three times greater” than the width of the haptics and by
requiring the snag resistant means to be “substantially coplanar” with the haptics.
258 F.3d at 1372, 59 USPQ2d at 1600. As revealed in the underlying District
Court decision, these same or similar limitations were present in claims throughout
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