Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
McKelvey, Senior Administrative Patent Judge, concurring.
I join the majority opinion authored by Judge MacDonald.
As this case demonstrates, there is a good faith debate among the
judges of the Board of Patent Appeals and Interferences on how recapture
issues should be resolved when, as here, there is both a broadening and
narrowing limitation in a claim sought to be reissued vis-à-vis a patent claim
narrowed in the face of a prior art rejection during prosecution of the
application which matured into the patent. As Judge MacDonald's majority
opinion and Judge Blankenship's dissent demonstrate, cogent arguments can
be made on both sides of the debate. See also Ex parte Kraus, No. 2005-
0841 Paper 50 (Bd. Pat. App. & Int. Apr. 7, 2005, subsequent opinion,
No. 2005-0841, Paper 52 (Bd. Pat. App. & Int. Sep. 21, 2006) (available at
http://www.uspto.gov/web/offices/dcom/bpai/informative_opinions.html)).
The ex parte patent system is set up to permit an applicant dissatisfied
with our decision to seek judicial review. 35 U.S.C. § 141 (Federal Circuit)
and § 145 (district court). The examiner cannot seek judicial review. For
practical reasons based on long-standing stare decisis and Anglo-Saxon
jurisprudential considerations, the Board gives binding effect to decisions of
its appellate reviewing courts—the Federal Circuit and where applicable the
Supreme Court.
In the absence of binding Federal Circuit or Supreme Court precedent,
the Board has a process for adopting a Board decision as "binding"
precedent at the Board level. Ex parte Eggert, 67 USPQ2d 1716 (Bd. Pat.
App. & Int. 2003), is an example of "binding" Board precedent. However,
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