Ex Parte Hollingsworth - Page 21
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unless the views expressed in an opinion in support of the decision, among a
number of things, are inconsistent with a decision of the Federal Circuit. In
our view, the majority view in Eggert is believed to be inconsistent with the
subsequent Federal Circuit decision in North American Container with
respect to the principles governing application of Substep (3)(a) of Clement.
The Eggert majority’s analysis is believed to be consistent with North
American Container in that the majority applied the three-step framework
analysis set forth in applicable Federal Circuit opinions, e.g., (1) Pannu v.
Storz Instruments Inc., 258 F.3d 1366, 1370-71, 59 USPQ2d 1597, 1600
(Fed. Cir. 2001); (2) Clement, 131 F.3d at 1470, 45 USPQ2d at 1165 and (3)
Hester, 142 F.3d at 148, 46 USPQ2d at 1648-49. However, the Eggert
majority also held that the surrendered subject matter was the rejected claim
only rather than the amended portion of the issued claim. 67 USPQ2d at
1717. At a similar point in the recapture analysis, North American
Container has clarified the application of the three-step framework analysis.
North American Container holds that the “inner walls” limitation (a portion
of the issued claim that was added to the rejected claim by amendment) was
“subject matter that was surrendered during prosecution of the original-filed
claims.” 415 F.3d at 1350, 75 USPQ2d at 1557.
It is believed that the Substep (3)(a) rationale of the Eggert majority
(1) is not consistent with the rationale of the Federal Circuit in North
American Container and (2) should no longer be followed or be applicable
to proceedings before the USPTO.
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Last modified: November 3, 2007