Appeal No. 2006-2248
Application No. 10/158,618
application claim which was canceled or amended and (b) the patent claim which
was ultimately issued” (Opinion, page 21).
The majority’s position regarding surrendered subject matter is erroneous.
Our binding precedent includes numerous decisions which define
surrendered subject matter in terms of a claim that had been canceled or amended
to avoid a rejection. For example, see In re Clement, 131 F.3d 1464, 45 USPQ2d
1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 221 USPQ 289
(Fed. Cir. 1989); In re Richman, 409 F.2d 269, 161 USPQ 359 (CCPA 1969); In
re Byers, 230 F.2d 451, 109 USPQ 53 (CCPA 1956); In re Wadsworth, 27 CCPA
735, 107 F.2d 596, 43 USPQ 460 (CCPA 1939). The majority has contradicted
this binding precedent in taking the position that such a definition is no longer
proper under any circumstances.
I acknowledge that the majority’s definition of surrendered subject matter
would be proper under appropriate factual circumstances. See Hester Indus. v.
Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998). However, the
majority has erred in contending that such a definition is proper under all
circumstances. Indeed, such an inflexible definition is not only contrary to binding
- 50 -
Page: Previous 43 44 45 46 47 48 49 50 51 52 53 54 55 56 57 Next
Last modified: November 3, 2007