Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
(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
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
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