Appeal 2006-1068
Reissue Application 08/425,766
patent claim was ABCDEF, there would be recapture for ABC or anything broader
than ABC, but not for claims directed to ABCX, ABCDBr, ABCEF, or ABrBCDEF,
because those claims would be narrower than the finally rejected claim ABC. 67
USPQ2d at 1717. In its opinion, the majority recognized that the Federal Circuit
had held that “the mere presence of narrowing limitations in the reissue claim is
not necessarily sufficient to save the reissue claim from the recapture rule.” 67
USPQ at 1729.
Board of Patent Appeals and Interferences Standard Operating Procedure 2
(Revision 6) (August 10, 2005) mandates that a published precedential opinion of
the Board is binding on all judges of the Board unless the views expressed in an
opinion in support of the decision, among a number of things, are inconsistent with
a decision of the Federal Circuit. In our view, the majority view in Eggert is
believed to be inconsistent with the subsequent Federal Circuit decision in North
American Container with respect to the principles governing application of
Substep (3)(a) of Clement.
The Eggert majority’s analysis is believed to be consistent with North
American Container in that the majority applied the three-step framework analysis
set forth in applicable Federal Circuit opinions, e.g., (1) Pannu v. Storz Instruments
Inc., 258 F.3d 1366, 1370-71, 59 USPQ2d 1597, 1600 (Fed. Cir. 2001); (2)
Clement, 131 F.3d at 1470, 45 USPQ2d at 1165 and (3) Hester, 142 F.3d at 148,
46 USPQ2d at 1648-49. However, the Eggert majority also held that the
surrendered subject matter was the rejected claim only rather than the amended
29
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