Appeal No. 2005-0841
Application No. 08/230,083
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.
(4)
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 USPQ2d
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
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