Appeal 2005-0801
Application 09/848,628
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 U.S.P.Q.2d 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 U.S.P.Q. 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 applicable Federal Circuit opinions, e.g., (1) Pannu v.
Storz Instruments, Inc., 258 F.3d 1366, 1370-71, 59 U.S.P.Q.2d 1597, 1600
(Fed. Cir. 2001); (2) Clement, 131 F.3d at 1470, 45 U.S.P.Q.2d at 1165 and
(3) Hester, 142 F.3d at 148, 46 U.S.P.Q.2d 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 U.S.P.Q.2d at
1717. At a similar point in the recapture analysis, North American
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