Appeal 2007-1432
Application 09/141,186
Patent 5,549,673
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
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
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