Appeal No. 2004-0659
Application No. 09/111,978
(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
not necessarily sufficient to save the reissue claim from the recapture rule.” 67 USPQ at
1729.
Board of Patent Appeals and Interferences Standard Operating Procedure 2
(Revision 6) (August 10, 2005) mandates that a published precedential opinion of the
Board is binding on all judges of the Board 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
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