Appeal No. 2002-1841 Page 2
Application No. 08/363,966
BACKGROUND
1. A review of the file record indicates that claims 57 to 65 have been rejected
under 35 U.S.C. § 251 as attempting to recapture subject matter surrendered in the
application to obtain the original patent.
2. A precedential opinion concerning a reissue recapture rejection under
35 U.S.C. § 251 was decided May 29, 2003 in Ex parte Eggert.2 In Eggert, the majority
opinion applied the fact-specific analysis set forth in In re Clement, 131 F.3d 1464,
1468-71 45 USPQ2d 1161, 1164-66 (Fed. Cir. 1997), determined that under the facts
and circumstances before it, the “surrendered subject matter” was claim 1 of Eggert as
that claim existed prior to the post-final rejection amendment that led to the allowance of
claim 1 in the original patent, and decided that reissue claims 15-22 of Eggert were not
precluded (i.e., barred) by the “recapture rule.” Slip. op. at 39-45.
ACTION
We remand this application to the examiner for a determination of whether the
rejection under 35 U.S.C. § 251 remains appropriate in view of Ex parte Eggert.
If the examiner determines that the rejection under 35 U.S.C. § 251 remains
appropriate, the examiner is authorized to prepare a supplemental examiner's answer
specifically addressing the § 251 rejection. See 37 CFR § 1.193(b)(1). In the event that
2 A copy of the Eggert opinion is attached to this opinion. An electronic copy of Eggert is available
at http://www.uspto.gov/web/offices/dcom/bpai/prec/RC010790.pdf.
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