Appeal No. 2005-0841
Application No. 08/230,083
rejection. Id. at 1731. Accordingly, it further determined that
the omission of that limitation in the reissue claims was a
broadening in an aspect germane to the prior art rejection. It
also found that the finally rejected claim prior to the amendment
that resulted in the issuance of the patent was surrendered
subject matter. Id.
In applying the third step of the Clement test, determining
whether the surrendered subject matter had crept back into the
reissue claim, the majority opinion looked at the new limitation
of reissue claim 15 that limited the shape of the retaining
member to "substantially covering said outer surface of said
magnet" and the new limitation of reissue claim 22 that limited
the shape of the retaining member to "having a continuous outer
periphery such that any two points on the periphery can be joined
by a straight line segment which does not extend outside the
periphery." The majority ascertained that the reissue claims
were "narrower than the surrendered subject matter in an aspect
germane to the prior art rejection (i.e., the shape of the
retaining member) and broader only in aspects unrelated to the
rejection." Eggert at 1731. It held that the facts of the case
fell into category 3(b) of the principles set forth in Clement,
and, therefore, that the claims were not barred by the recapture
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