Appeal No. 2005-0841
Application No. 08/230,083
differently today, it still stands as binding precedent until
overruled.25 On the other hand, what may have been traditional
practice is not, without a clear holding of one of the Federal
Circuit's predecessors, binding upon it.26 The Federal Circuit has
adopted the rule that prior decisions of a panel of the court are
binding precedent on subsequent panels unless and until overturned
en banc. Where there is direct conflict, the earliest decision
controls.27 We believe it is the burden of the majority to
establish that their new interpretation of "surrendered subject
matter" is consistent with the decisions in Willingham, Wesseler,
Richman, Wadlinger and Whittaker. This, they have not done.
SUMMARY OF THE RECAPTURE RULE
In our opinion, the Federal Circuit has set forth the
following analytical process for determining if the recapture rule
should be applied against claims in a reissue application.
25 In re Durden, 763 F.2d 1406, 1410, 226 USPQ 359, 361 (Fed. Cir.
1985). See also Larry Harmon Pictures Corp. v. Williams Rest. Corp., 929 F.2d
662, 666, 18 USPQ2d 1292, 1295 (Fed. Cir. 1991). The Federal Circuit has
recognized that later CCPA decisions could resolve precedential inconsistencies
sub silento; later CCPA decisions would control because that court always sat en
banc. In re Gosteli, 872 F.2d 1008, 1011, 10 USPQ2d 1614, 1616 (Fed. Cir. 1989).
26 Dynamics Corp. v. United States, 766 F.2d 518, 520, 226 USPQ 622, 623
(Fed. Cir. 1985).
27 Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 765, 9 USPQ2d 1417, 1423
(Fed. Cir. 1988). Decisions of a three-judge panel cannot overturn prior
precedential decisions of the court. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). A reversal of such a holding would
have to be through an en banc proceeding in the Federal Circuit, Supreme Court
review, or a change in the patent statute by Congress. Jacobs Wind Elec. Co. v.
Florida Dep't of Transp., 919 F.2d 726, 728, 16 USPQ2d 1972, 1973-74 (Fed. Cir.
1990).
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