Appeal 2006-2744
Application 09/664,794
Patent 5,584,962
movement between an open position and a closed position relative to the
lower outer shell portion by "manually engaging said upper outer shell
portion directly and lifting said upper outer shell portion upwardly to said
open position thereof" (independent apparatus claim 36; independent method
claim 47).
The Appellants consider these limitations to render the appealed
claims materially narrowed relative to the claims prosecuted and issued in
their patent, thereby avoiding the recapture rule (Br. 6, 14).
The Examiner also considers these limitations to materially narrow
the reissue claims (Answer 8, last full sentence). Nevertheless, the
Examiner believes that Appellants' reissue claims do not avoid the recapture
rule because "[t]hese added limitations concerning the 'outer shell' are not
related to the surrendered subject [matter] concerning the 'pre[-]tension[ing]
means'" (Answer 9). In the Examiner's view, the recapture rule is not
avoided because the added limitations are materially narrowing in aspects
(i.e., the outer shell features) not related to the surrendered subject matter
(i.e., the pre-tensioning features). As support for this view, the Examiner
cites: Pannu v. Storz Instruments, Inc., 258 F.3d 1366, 59 USPQ2d 1597
(Fed. Cir. 2001); Anderson v. Int'l Eng'g & Mfg., Inc., 160 F.3d 1345,
48 USPQ2d 1631 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464,
45 USPQ2d 1161 (Fed. Cir. 1997); and Mentor Corp. v. Colorplast,
998 F.2d 992, 27 USPQ2d 1521 (Fed. Cir. 1993) (Answer 5, 9).
Contrary to the Examiner's belief, avoidance of the recapture rule does
not require that a materially narrowing limitation of a reissue claim be
related to its broader aspects surrendered in the original prosecution. This is
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