Appeal 2006-2744
Application 09/664,794
Patent 5,584,962
Remand
We have made our above holding based on the limited record of this
appeal. However, the broader record of the application includes a prior art
reference which may evince that the appealed reissue claims (1) are
unpatentable over the prior art and therefore (2) do not avoid recapture by a
materially narrowing limitation.
Specifically, the application record includes US Patent 5,480,509 to
Matsuo et al. (Matsuo)(Information Disclosure Statement, filed January 17,
2001). This patent was considered by the Examiner as indicated by citation
initialing (id.), although the Examiner has never applied the Matsuo patent in
a rejection of the reissue claims. Nevertheless, for the reasons detailed
below, it appears that at least independent apparatus claim 36 and
independent method claim 47 are unpatentable under 35 U.S.C. § 102(a) or
§ 103(a) over Matsuo.
Matsuo discloses a laminating apparatus comprising several
embodiments (Figs. 1, 8, 11) that are characterized as improvements over a
conventional prior art laminating apparatus (Figs. 17, 18). The respective
disclosures concerning each of Matsuo's embodiments as well as the prior
art laminating apparatus appear to expressly or inherently teach each and
every limitation in claim 36. See In re Schreiber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1431 (Fed. Cir. 1997).
For example, the claim 36 limitations of a lower outer shell portion
with an upper outer shell portion manually movably connected thereto
appear to be satisfied by Matsuo's Figure 11 embodiment which includes
lower frame 1b and upper frame 1a since these frames are pivotally
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