Appeal No. 2005-0841
Application No. 08/230,083
rule. While one can disagree with the Eggert majority as to what
is meant by "surrendered subject matter," the result in Eggert is
consistent with our reading of the case law prior to Eggert,
i.e., Mentor, Clement, Hester, and Pannu, as discussed supra.10
The Federal Circuit was faced once again with the issue of
reissue recapture in North American Container, Inc. v. Plastipak
Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005).
During the prosecution of an application for patent, the examiner
rejected the claims over a combination of two references,
Dechenne and Jakobsen. To overcome the rejection, the applicant
limited the claims by specifying that the shape of the inner
walls was generally convex. The applicant convinced the examiner
that the shape of the base as amended defined over "both the
Dechenne patent, wherein the corresponding wall portions 3 are
slightly concave . . . and the Jakobsen patent, wherein the
entire re-entrant portion is clearly concave in its entirety."
Id. at 1340, 75 USPQ2d at 1549. After a patent issued on the
amended claims, the applicant filed a reissue application
10 We note that although the Eggert majority repeatedly stated that it
viewed the finally rejected claim as the surrendered subject matter, the analysis
of the facts focused on whether the limitation omitted had been added in the
prosecution of the original application to overcome a prior art rejection and
whether the narrowing limitations on reissue related to the same subject matter
as the limitation omitted. Thus, despite statements in Eggert that could be
considered inconsistent with our interpretation of the relevant case law, there
is no inconsistency between our interpretation and the holding in Eggert as it
applies to the particular facts.
-58-
Page: Previous 51 52 53 54 55 56 57 58 59 60 61 62 63 64 65 Next
Last modified: November 3, 2007