Appeal 2007-0493
Application 10/289,967
Patent 6,144,380
American Container’s] deletion of the “generally convex”
limitation clearly broadened the “inner wall” limitation.
Id. Thus, the Federal Circuit in North American Container further refined
Substep (3)(a) of Clement: “broader in an aspect germane to a prior art
rejection” means broader with respect to a specific limitation (1) added to
overcome prior art in prosecution of the application which matured into the
patent sought to be reissued and (2) eliminated in the reissue application
claims.
(5)
Ex parte Eggert
The opinion in Ex parte Eggert, 67 USPQ2d 1716 (Bd. Pat. App. &
Int. 2003), issued as a precedential opinion, is also part of the recapture
precedent applicable to proceedings before the United States Patent &
Trademark Office (USPTO). Eggert was entered on May 29, 2003, prior to
the Federal Circuit’s North American Container decision. In Eggert, a
majority stated that “[i]n our view, the surrendered subject matter is the
outer circle of Drawing 1 [the rejected claim prior to the amendment that
resulted in the claim being issued] because it is the subject matter appellant
conceded was unpatentable.” 67 USPQ2d at 1717. The majority further
held that “in our view” subject matter narrower than the rejected claim but
broader than the patented claim is not barred by the recapture rule. Id. The
majority explained that if the finally rejected claim was ABC and the patent
claim was ABCDEF, there would be recapture for ABC or anything broader
than ABC, but not for claims directed to ABCX, ABCDBr, ABCEF, or
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