Appeal 2006-1454
Application 09/004,524
Patent 5,483,421
page 10 of the Examiner’s Answer entered October 19, 2000. The court in
Clement focused on “aspects” of the claims. Therefore, we find no error in the
Examiner’s analysis based on individual elements surrendered during prosecution.
In the “Reply to Supplemental Examiner’s Answer” (“Second Reply”) filed
February 18, 2005, Appellants present an Eggert based analysis and argue that in
view of Eggert “it is clear that the recapture doctrine does not apply.” As we
discussed above, the majority view in Eggert is believed to be inconsistent with the
subsequent binding Federal Circuit decision in North American Container with
respect to the principles governing application the guidelines of Clement.
Therefore, the overall result of Appellants’ Eggert analysis fails to establish that
the Examiner erred.
Within the Eggert analysis at page 5 of the second Reply Brief, Appellants
present specific evidence. The ultimate point which we understand Appellants to
be trying to make is that at the time of the amendment in the original patent
application an objective observer would have viewed the “encapsulating”
limitation as “germane to the prior art rejection” because it is intimately related to
the composition (glass filled epoxy) and CTE (coefficient) limitations added by the
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