Appeal No. 2005-0841
Application No. 08/230,083
Circuit. Thus, we agree with the plurality opinion that Eggert
should no longer be followed.
To summarize, to determine if there has been a recapture of
surrendered subject matter, we apply the three step analysis set
forth in Clement. There is disagreement as to whether or not the
phrase "surrendered subject matter" includes more than merely the
rejected claim prior to the amendment that overcame the prior art
rejection, i.e., something relating to the added limitation. In
viewing Clement in a vacuum, even if it could be argued that
Clement would support multiple interpretations, as indicated
supra, both Mentor and cases decided since Clement suggest that
the Federal Circuit did, in fact, mean to include as surrendered
subject matter any claim that lacks a limitation directed to the
specific subject matter added in the original prosecution to
overcome a prior art rejection. Thus, the proper interpretation
of the applicable and binding case law is that surrendered
subject matter includes any claim that lacks a limitation
directed to the specific subject matter that was added to
overcome a prior art rejection.
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