Appeal No. 2004-0659
Application No. 09/111,978
fact further limit the inner wall. Accordingly, by "'inner wall' limitation," we believe that
the Federal Circuit meant the particular limitation that was broadened (that the inner wall
was generally convex) in the reissue claims, not any limitation relating to the inner wall.
Thus, the Federal Circuit in North American Container further clarified that "narrower in
an aspect germane to a prior art rejection" in the Clement test means narrower with
respect to the specific limitation added for patentability in the original prosecution and
eliminated in the reissue claims.
In Eggert, the limitation added for patentability was "said retaining member being
generally bowl-shaped and convex toward said magnet," whereas the narrowing was
"substantially covering said outer surface of said magnet" or "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." Id. at 1731. Since North
American Container was decided after Eggert, and neither narrowing limitation in Eggert
further limited the specific limitation added for patentability, Eggert is no longer
consistent with the rationale of the Federal Circuit. Thus, Eggert should no longer be
followed.
To summarize, to determine if there has been a recapture of surrendered subject
matter, we apply the three step analysis set forth in Clement. There is disagreement as to
whether or not the phrase "surrendered subject matter" includes more than merely the
rejected claim prior to the amendment that overcame the prior art rejection, i.e.,
something relating to the added limitation. In viewing Clement in a vacuum, even if it
could be argued that Clement would support multiple interpretations, as indicated supra,
both Mentor and cases decided since Clement suggest that the Federal Circuit did, in fact,
mean to include as surrendered subject matter any claim that lacks a limitation directed to
the specific subject matter added in the original prosecution to overcome a prior art
rejection. Thus, the proper interpretation of the applicable and binding case law is that
surrendered subject matter includes any claim that lacks a limitation directed to the
specific subject matter that was added to overcome a prior art rejection.
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