Appeal 2006-2744
Application 09/664,794
Patent 5,584,962
materially narrowed in respects other than the broader surrendered aspects.
North American Container, 415 F.3d at 1349, 75 USPQ2d at 1556; Pannu,
258 F.3d at 1371-72, 59 USPQ2d at 1600; Hester Indus., 142 F.3d at 1482-
83, 46 USPQ2d at 1649-50.
The other authorities cited by the Examiner also do not support his
position.
Anderson v. Int'l Eng'g & Mfg., Inc. relates to the construction of a
reexamination claim rather than avoidance of the recapture rule by a material
narrowing of a reissue claim.
The reissue claims in Clement, like those on appeal here (e.g., see
Findings 8 and 11), 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 claims (see clause (f) of patent claim 1). 131 F.3d at 1470, 1474,
45 USPQ2d at 1165, 1169. Therefore, the subject appeal is distinguishable
from Clement because the narrowing limitation of Clement, like Pannu, was
not overlooked during original prosecution and did not materially narrow the
reissue claim.
Finally, Mentor also does not support the Examiner's belief that a
reissue claim avoids the recapture rule only if its materially narrowing
limitation is related to its broadening surrendered aspect. In Mentor, each of
the limitations added to the reissue claims were thoroughly analyzed and
determined to not be materially narrowing because the same or similar
features were in the patent claims or the prior art. Mentor, 998 F.2d at 996,
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