Appeal No. 2004-0659
Application No. 09/111,978
the limitation "said retaining member being generally bowl-shaped and convex toward
said magnet," which defined the shape of the retaining member and which had been
added to overcome a prior art rejection. Id. at 1731. Accordingly, it further determined
that the omission of that limitation in the reissue claims was a broadening in an aspect
germane to the prior art rejection. It also found that the finally rejected claim prior to the
amendment that resulted in the issuance of the patent was surrendered subject matter. Id.
In applying the third step of the Clement test, determining whether the
surrendered subject matter had crept back into the reissue claim, the majority opinion
looked at the new limitation of reissue claim 15 that limited the shape of the retaining
member to "substantially covering said outer surface of said magnet" and the new
limitation of reissue claim 22 that limited the shape of the retaining member to "having a
continuous outer periphery such that any two points on the periphery can be joined by a
straight line segment which does not extend outside the periphery." The majority
ascertained that the reissue claims were "narrower than the surrendered subject matter in
an aspect germane to the prior art rejection (i.e., the shape of the retaining member) and
broader only in aspects unrelated to the rejection." Eggert at 1731. It held that the facts
of the case fell into category 3(b) of the principles set forth in Clement, and, therefore,
that the claims were not barred by the recapture rule. While one can disagree with the
Eggert majority as to what is meant by "surrendered subject matter," the result in Eggert
is consistent with our reading of the case law prior to Eggert, i.e., Mentor, Clement,
Hester, and Pannu, as discussed supra.10
10 We note that although the Eggert majority repeatedly stated that it viewed the
finally rejected claim as the surrendered subject matter, the analysis of the facts focused
on whether the limitation omitted had been added in the prosecution of the original
application to overcome a prior art rejection and whether the narrowing limitations on
reissue related to the same subject matter as the limitation omitted. Thus, despite
statements in Eggert that could be considered inconsistent with our interpretation of the
relevant case law, there is no inconsistency between our interpretation and the holding in
Eggert as it applies to the particular facts.
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