Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
facts fell into category 3(b) as described by Clement. Eggert, 67 USPQ2d at
1731-32.
In the instant case, Appellants appear to have been careful to provide
“replacement” limitations for the limitations that were added during
prosecution in response to prior art rejection. The “replacement” limitations
are broader versions of the original limitations that were added. Even
though the instant reissue claims were submitted before the Board’s decision
in Eggert, the claims appear to avoid recapture consistent with Eggert and
consistent with current USPTO policy. In accordance with the holding of
Eggert, there is no recapture when the reissue claims retain, in broadened
form, the limitation added (or argued) to overcome a prior art rejection in the
original prosecution. See Manual of Patent Examining Procedure §
1412.02, p. 1400-23, under heading “(d) Reissue Claims Broader in Scope in
Area Directed to Amendment/Argument Made to Overcome Art Rejection in
Original Prosecution; but Reissue Claims Retain, in Broadened Form, the
Limitation(s) Argued/Added to Overcome Art Rejection in Original
Prosecution:” (8th Ed., Rev. 5, Aug. 2006).9
The majority considers Eggert to be inconsistent with the later Federal
Circuit decision in North American Container, Inc. v. Plastipak Packaging,
Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005). In my view, the
9 On this record, it is not clear why this case is before the Board. However,
the Examiner found (Supplemental Answer 11-12) that the surrender-
generating limitations added during prosecution were omitted in their
entirety; i.e., that the facts fall into category 3(a) as described by Clement,
where claims are properly rejected for recapture.
- 58 -
Page: Previous 51 52 53 54 55 56 57 58 59 60 61 62 63 64 65 Next
Last modified: September 9, 2013