Appeal 2006-2744
Application 09/664,794
Patent 5,584,962
relate to surrendered subject matter since this subject matter, having been
claimed and then surrendered during original prosecution, could not have
been overlooked. Accordingly, the Examiner's belief (i.e., in order to avoid
the recapture rule, reissue claims must be materially narrowing in aspects
related to the surrendered subject matter) is incompatible with the purpose
served by the recapture rule exception.
In addition, a careful study of their underlying facts reveals that the
authorities cited by the Examiner do not in any way support his position.
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 the Examiner's position.
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 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
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