Appeal 2007-0040
Application 10/170,069
Patent 6,073,699
(6)
What subject matter is surrendered?
In a case involving Substep (3)(a) of Step 3 of Clement, what is the
subject matter surrendered?
Is it
(1) the subject matter of an application claim which was
amended or canceled or
(2) the subject matter of an application claim which was
amended or canceled and, on a limitation-by-limitation
basis, the territory falling between the scope of
(a) the application claim which was canceled or
amended and
(b) the patent claim which was ultimately issued?
We believe North American Container stands for the proposition that it is
(2) and not (1). Accordingly, we hold that it is (2).
(7)
Clement principles are not per se rules
Our reading of our appellate reviewing court’s recapture opinions, as
a whole, suggests that the Clement steps should not be viewed as per se
rules. For example, we note the following in Clement, 131 F.3d at 1469, 45
USPQ2d at 1164:
Although the recapture rule does not apply in the absence of
evidence that the Appellant’s amendment was “an admission
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