Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
45 USPQ2d at 1165. See also Mentor Corp. at 993, 995-97, 27 USPQ2d at
1523-26.
In Ball Corp. v. United States, 729 F.2d 1429, 221 USPQ 289 (Fed.
Cir. 1984), the issued claim recited “a plurality of feedlines” and a
“substantially cylindrical conductor.” The canceled claim recited “feed
means includ[ing] at least one conductive lead” and a “substantially
cylindrical conductor.” The prosecution history showed that the patentee
added the “plurality of feedlines” limitation in an effort to overcome a prior
art rejection, but the cylindrical configuration limitation was not added to
overcome a prior art rejection nor argued to distinguish over a reference.
The reissue claim included limitations not present in the canceled claims that
related to the feed means element, but allowed for multiple feedlines. The
reissue claim was narrower than the canceled claim with respect to the feed
means aspect. The reissue claim deleted the cylindrical configuration
limitation, which made the claim broader with respect to the configuration of
the conductor. The reissue claim was allowed because the patentee “was not
attempting to recapture surrendered subject matter.” In re Clement at 1470,
45 USPQ2d at 1165. See also Ball Corp. at 1432-33, 1437, 221 USPQ at
291-92, 295.
In both Mentor and Ball, the relevance of the prior art
rejection to the aspects narrowed in the reissue claim was an
important factor in our analysis. From the results and reasoning
of those cases, the following principles flow: (1) if the reissue
claim is as broad as or broader than the canceled or amended
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