Appeal No. 2005-0642
Application No. 09/568,278
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
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