Appeal No. 2005-0841
Application No. 08/230,083
(2) Clement, 131 F.3d at 1470, 45 USPQ2d at 1165 and (3) Hester,
142 F.3d at 148, 46 USPQ2d 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 USPQ2d at 1717. At a similar point in the recapture
analysis, North American 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 USPQ2d 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.
(5)
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
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