Appeal 2007-0493
Application 10/289,967
Patent 6,144,380
ABrBCDEF, because those claims would be narrower than the finally
rejected claim ABC. 67 USPQ2d at 1718. In its opinion, the majority
recognized that the Federal Circuit had held that “the mere presence of
narrowing limitations in the reissue claim is not necessarily sufficient to save
the reissue claim from the recapture rule.” 67 USPQ at 1729.
Board of Patent Appeals and Interferences Standard Operating
Procedure 2 (Revision 6) (August 10, 2005) mandates that a published
precedential opinion of the Board is binding on all judges of the Board
unless the views expressed in an opinion in support of the decision, among a
number of things, are inconsistent with a decision of the Federal Circuit. In
our view, the majority view in Eggert is believed to be inconsistent with the
subsequent Federal Circuit decision in North American Container with
respect to the principles governing application of Substep (3)(a) of Clement.
The Eggert majority’s analysis is believed to be consistent with North
American Container in that the majority applied the three-step framework
analysis set forth in applicable Federal Circuit opinions, e.g., (1) Pannu v.
Storz Instruments, Inc., 258 F.3d 1366, 1370-71, 59 USPQ2d 1597, 1600
(Fed. Cir. 2001); (2) Clement, 131 F.3d at 1470, 45 USPQ2d at 1165 and (3)
Hester, 142 F.3d at 148, 46 USPQ2d at 1648-49. However, the Eggert
majority also held that the surrendered subject matter was the rejected claim
only rather than the amended portion of the issued claim. 67 USPQ2d at
1717. At a similar point in the recapture analysis, North American
Container has clarified the application of the three-step framework analysis.
North American Container holds that the “inner walls” limitation (a portion
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