Appeal No. 2005-0841
Application No. 08/230,083
reissue claims) was part of the inner wall. Thus, the limitation
added in the reissue claims (regarding the re-entrant portion)
did in fact further limit the inner wall. Accordingly, by
"'inner wall' limitation," we believe that the Federal Circuit
meant the particular limitation that was broadened (that the
inner wall was generally convex) in the reissue claims, not any
limitation relating to the inner wall. Thus, the Federal Circuit
in North American Container further clarified that "narrower in
an aspect germane to a prior art rejection" in the Clement test
means narrower with respect to the specific limitation added for
patentability in the original prosecution and eliminated in the
reissue claims.
In Eggert, the limitation added for patentability was "said
retaining member being generally bowl-shaped and convex toward
said magnet," whereas the narrowing was "substantially covering
said outer surface of said magnet" or "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." Id. at 1731. Since North American Container was
decided after Eggert, and neither narrowing limitation in Eggert
further limited the specific limitation added for patentability,
Eggert is no longer consistent with the rationale of the Federal
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