Appeal No. 2005-0841
Application No. 08/230,083
limited the shape of the haptics to a 'continuous, substantially
circular arc.' On reissue, he is estopped from attempting to
recapture the precise limitation he added to overcome prior art
rejections." Id.
In Ex parte Eggert, 67 USPQ2d 1716 (Bd. Pat. App. & Int.
2003), a precedential Board decision entered May 29, 2003, the
majority opinion stated, "In 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."
Id. at 1717. The majority further stated 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.
However, it acknowledged that the Federal Circuit has 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." Id. at 1729.
In analyzing the facts of the case, the majority in Eggert
found that the reissue claims were broader than the patent claims
in several respects including that they omitted the limitation
"said retaining member being generally bowl-shaped and convex
toward said magnet," which defined the shape of the retaining
member and which had been added to overcome a prior art
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