Appeal 2005-0801
Application 09/848,628
applied on a limitation-by-limitation basis, and ... [North
American Container’s] deletion of the “generally convex”
limitation clearly broadened the “inner wall” limitation.
Id. Thus, the Federal Circuit in North American Container further
developed the principles of Substep (3)(a) of Clement: “broader in an aspect
germane to a prior art rejection” means broader with respect to a specific
limitation (1) added to overcome prior art in prosecution of the application
which matured into the patent sought to be reissued and (2) eliminated in the
reissue application claims.
(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 U.S.P.Q.2d 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
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