Appeal 2007-0493
Application 10/289,967
Patent 6,144,380
of the issued claim that was added to the rejected claim by amendment) was
“subject matter that was surrendered during prosecution of the original-filed
claims.” 415 F.3d at 1350, 75 USPQ2d at 1557.
It is believed that the Substep (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.
(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).
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