Appeal 2007-0040
Application 10/170,069
Patent 6,073,699
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.
The reissue claims in Clement 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 narrowing
limitation of Clement, like Pannu, was not overlooked during original
prosecution and did not materially narrow the reissue claim.
Additionally, in setting forth the test for recapture Clement states in
part that “if the reissue claim is narrower in an aspect germane to prior art
rejection, and broader in an aspect unrelated to the rejection, the recapture
rule does not bar the claim” and specifically states that “Ball is an example
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