Appeal 2006-2744
Application 09/664,794
Patent 5,584,962
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.
In contrast, as correctly explained by Appellants and not disputed by
the Examiner, the narrowing limitations of the reissue claims on appeal are
directed to aspects of the invention which had not been claimed and thus
were overlooked during prosecution of the original patent application (Br. 4;
Reply Br., filed July 24, 2003, 5). Additionally, since these limitations
patentably distinguish over the prior art including the Brink patent applied
during prosecution of both the original application (see Findings 2-6) and
this reissue application (see Findings 10-13), the reissue claims must be
considered materially narrowed (as both the Appellants and the Examiner
have agreed). Finally, avoidance of the recapture rule is not prevented
merely because Appellants' materially narrowing limitations are unrelated to
the broadening aspects of the reissue claims. As previously indicated, it is
well established that the recapture rule is avoided if the reissue claims were
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