Appeal No. 2006-2248
Application No. 10/158,618
(5)
Ex parte Eggert
Our opinion in Ex parte Eggert, 67 USPQ2d 1716 (Bd. Pat. App. & Int.
2003), issued as a precedential opinion, is also part of the recapture precedent
applicable to proceedings before the United States Patent & Trademark Office
(USPTO). Eggert was entered on May 29, 2003, prior to the Federal Circuit’s
North American Container decision. In Eggert, the majority stated that “[i]n our
view, the surrendered subject matter is the outer circle of Drawing 1 [the rejected
claim prior to the amendment that resulted in the claim being issued] because it is
the subject matter appellants conceded was unpatentable.” 67 USPQ2d at 1717.
The majority further held that “in our view” subject matter narrower than the
rejected claim but broader than the patented claim is not barred by the recapture
rule. Id. The majority explained that if the finally rejected claim was ABC and the
patent claim was ABCDEF, there would be recapture for ABC or anything broader
than ABC, but not for claims directed to ABCX, ABCDBr, ABCEF, or ABrBCDEF,
because those claims would be narrower than the finally rejected claim ABC. 67
USPQ2d at 1717. In its opinion, the majority recognized that the Federal Circuit
had held that “the mere presence of narrowing limitations in the reissue claim is
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