Ex Parte GEDNEY et al - Page 35



              Appeal 2006-1454                                                                                         
              Application 09/004,524                                                                                   
              Patent 5,483,421                                                                                         

              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                           
              portion of the issued claim.  67 USPQ2d at 1717.  At a similar point in the                              

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