Appeal 2005-0801
Application 09/848,628
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 U.S.P.Q.2d 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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