Appeal 2007-0040
Application 10/170,069
Patent 6,073,699
of the invention, this material narrowing must be in respects other than the
broader aspects relating to surrendered subject matter. Stated differently, a
material narrowing in an overlooked aspect cannot possibly relate to
surrendered subject matter since this subject matter, having been claimed
and then surrendered during original prosecution, could not have been
overlooked.
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 a contrary result to our
analysis. 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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