Appeal 2007-2127
Reexamination Control No. 90/006,621
Summary
To summarize, one or more rejections of claims 39-43, 47-49, 51-56,
61-67, 73-77, and 79 are affirmed.
The rejections of claims 1, 4, 6, 7, 14, 18, 24, 26, 27, 31, 33, 37, 38,
44-46, 50, 57-59, 68-72, 78, 80, 81, and 83 are reversed.
BROADENING
Issue
The Examiner rejected 16 groups of claims under 35 U.S.C. § 305 as
enlarging the scope of the claims being reexamined. Patent Owner argues
(Br. 110): "Each of the limitations that the Examiner refers to has been
added to the claims and does not replace any text previously in the claims.
As a matter of inexorable logic, none of the amendments broaden the claims,
they only narrow them."
The issue is whether the new and amended claims impermissibly
broaden the reexamination claims contrary to 35 U.S.C. § 305.
Principles of law
"No proposed amended or new claim enlarging the scope of a claim of
the patent will be permitted in a reexamination proceeding under this
chapter." 35 U.S.C. § 305; see also 37 C.F.R. § 1.552(b) ("Claims in an
ex parte reexamination proceeding will not be permitted to enlarge the scope
of the claims of the patent."). A claim is broader in scope if it includes
within its scope any subject matter that would not have infringed the original
patent. See In re Freeman, 30 F.3d 1459, 1464, 31 USPQ2d 1444, 1447
(Fed. Cir. 1994).
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