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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