Appeal 2006-1068
Reissue Application 08/425,766
“intermediate scope” is irrelevant. . . . [T]he recapture rule is applied
on a limitation-by-limitation basis, and ... [North American
Container’s] deletion of the “generally convex” limitation clearly
broadened the “inner wall” limitation.
Id. Thus, the Federal Circuit in North American Container further developed the
principles of Substep (3)(a) of Clement: “broader in an aspect germane to a prior
art rejection” means broader with respect to a specific limitation (1) added to
overcome prior art in prosecution of the application which matured into the patent
sought to be reissued and (2) eliminated in the reissue application claims.
(5)
Ex parte Eggert
Our opinion in Ex parte Eggert, 67 USPQ2d 1716 (Bd. Pat. App. & Int.
2003), issued as a precedential opinion, is also part of the recapture precedent
applicable to proceedings before the United States Patent & Trademark Office
(USPTO). Eggert was entered on May 29, 2003, prior to the Federal Circuit’s
North American Container decision. In Eggert, the majority stated that “[i]n our
view, the surrendered subject matter is the outer circle of Drawing 1 [the rejected
claim prior to the amendment that resulted in the claim being issued] because it is
the subject matter appellants conceded was unpatentable.” 67 USPQ2d at 1717.
The majority further held that “in our view” subject matter narrower than the
rejected claim but broader than the patented claim is not barred by the recapture
rule. Id. The majority explained that if the finally rejected claim was ABC and the
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