Appeal No. 2005-0841
Application No. 08/230,083
the patent claim was ABCDEF, there would be recapture for ABC or
anything broader 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 USPQ2d 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 USPQ 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 USPQ2d 1597, 1600 (Fed. Cir. 2001);
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