Appeal No. 2004-0659
Application No. 09/111,978
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.
(6)
WHAT SUBJECT MATTER IS SURRENDERED?
In a case involving Substep (3)(a) of Clement, what is the subject matter
surrendered?
Is it
(1) the subject matter of an application claim which was amended or
canceled or
(2) the subject matter of an application claim which was amended or
canceled and, on a limitation-by-limitation basis, the territory
falling between the scope of
(a) the application claim which was canceled or amended and
(b) the patent claim which was ultimately issued?
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