Appeal 2006-1068
Reissue Application 08/425,766
portion of the issued claim. 67 USPQ2d at 1717. At a similar point in the
recapture analysis, North American Container has clarified the application of the
three-step framework analysis. North American Container holds that the “inner
walls” limitation (a portion of the issued claim that was added to the rejected claim
by amendment) was “subject matter that was surrendered during prosecution of the
original-filed claims.” 415 F.3d at 1350, 75 USPQ2d at 1557.
It is believed that the Substep (3)(a) rationale of the Eggert majority (1) is
not consistent with the rationale of the Federal Circuit in North American
Container and (2) should no longer be followed or be applicable to proceedings
before the USPTO.
(6)
What subject matter is surrendered?
In a case involving Substep (3)(a) of Clement, what is the subject matter
surrendered?
Is it
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