Ex Parte Steenburg - Page 61



           Appeal 2006-1865                                                                         
           Application 09/660,433                                                                   
           Patent 5,802,641                                                                         

           Bradley R. Garris, Administrative Patent Judge, concurring:                              
                 For the reasons expressed in the panel opinion above, the record of this           
           appeal establishes a prima facie case of recapture which the Appellant has failed to     
           successfully rebut.  Therefore, I fully agree with the decision to affirm the § 251      
           rejection of claims 14-100 based on recapture.                                           
                 I write separately only to express disagreement with certain statements,           
           which are merely dicta, in the above opinion.                                            
                 Specifically, page 25 contains the statement "the Subset (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."  I do not consider the aforementioned rationale        
           of Ex parte Eggert, 67 USPQ2d 1716 (BPAI 2003) to be inconsistent with the               
           rationale of North American Container, Inc. v. Plastipak Packaging, Inc., 413 F.3d       
           1335, 75 USPQ2d 1545 (Fed. Cir. 2005).  The fact that an added claim limitation          
           was considered to be surrendered in North American Container but not in Eggert is        
           because these cases involved different facts which evinced surrender in the former       
           but not the latter.                                                                      



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