Appeal No. 2007-0441
Reissue Application 10/155,945
Patent 5,311,959
1 We are unable on this record to come up with any device which would
2 anticipate or infringe patent claim 1. Accordingly, we are left with a not so
3 good choice of holding essentially that patent claim 1 has no scope.
4 Reissue claim 1, however, is sufficiently definite to fall within the
5 requirements of 35 U.S.C. § 112, second paragraph. The “manufacture”
6 shown in Figs. 1 and 2 of Applicant’s drawing can be read onto reissue
7 claim 1. Thus, if a prior art reference described the manufacture of reissue
8 claim 1, it would anticipate the claim; if a manufacture like that shown in
9 Figs. 1 and 2 were being used without Applicant’s permission, it would
10 infringe reissue claim 1.
11 Binding precedent, as well as § 1412.03 of the Manual of Patent
12 Examining Procedure (8th ed., Rev. 5, Aug. 2006), tells us that a claim is
13 enlarged if it is so changed as to bring within its scope any structure which
14 was not within the scope of the original patent claims. In other words, the
15 scope of a claim is enlarged if it is broader in any respect than the original
16 patent claim, even though it may be narrower in other respects. See, e.g.,
17 In re Rogoff, 261 F.2d 601, 120 USPQ 185 (CCPA 1958); In re Ruth,
18 278 F.2d 729, 126 USPQ 155 (CCPA 1960); and Tillotson, Ltd. v. Walbro
19 Corp., 831 F.2d 1033, 1037 n.2, 4 USPQ2d 1450, 1453 n.2 (Fed. Cir. 1987).
20 In this case, we find that the manufacture of Figs. 1 and 2 of
21 Applicant’s drawings—if prior art—would anticipate or if used without
22 Applicant’s permission would infringe reissue claim 1, but would not
23 anticipate or infringe patent claim 1. It necessarily follows that reissue claim
24 1 enlarges the “scope” of patent claim 1, all contrary to the fourth paragraph
25 of 35 U.S.C. § 251.
11
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: September 9, 2013