Appeal 2006-1865
Application 09/660,433
Patent 5,802,641
prosecution of the original patent application. Pannu v. Storz Instruments, Inc.,
106 F. Supp. 2d 1304, 1308 (S.D Fla. 2000). For this reason, the District Court
held that the recapture rule had not been avoided because the narrowing limitations
were not overlooked aspects of the invention and did not materially narrow the
claim. Id., 106 F. Supp 2d at 1308-09, citing for authority Hester Indus., 142 F.3d
at 1483, 45 USPQ2d at 1650 and Clement, 131 F.3d at 1469, 45 USPQ2d at 1165.
This factual background more fully illuminates the Federal Circuit’s
determination in Pannu that the reissued claims were not narrowed in any material
respect compared with their broadening. This determination is not based on the
fact that the narrowing limitations of the reissue claims were unrelated to their
broadening. Rather, it is based on the fact that these same or similar limitations
had been prosecuted in the original patent application and therefore were not
overlooked aspects of the invention and did not materially narrow the reissue
claims.
The reissue claims in Clement were both broader and narrower in aspects
germane to a prior art rejection. 131 F.3d at 1470, 45 USPQ2d at 1165. However,
the narrower limitation recited in the Clement reissue claims (“at least 59 ISO in
the final pulp”; see clause (e) of reissue claim 49) also was recited in the patent
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