Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
holding of Eggert has not been overruled by North American Container, or
any other Federal Circuit decision after Eggert, because our reviewing court
has not since ruled on a recapture case where a different limitation is
submitted as a substitute for a limitation that was added in response to a
rejection during the original prosecution. In other words, the Eggert facts
fell within category 3(b) as described by Clement. The North American
Container facts fell within category 3(a) as described by Clement -- i.e., in
the reissue claims the limitation added during prosecution was missing in its
entirety.10
I have no disagreement with the majority’s rejection of the Eggert
rationale that is reproduced at part IV.A.(5) supra. The statements from
Eggert are mere dicta that were never followed by the Office. However, in
relation to the cited Standard Operating Procedure of the Board (SOP2.VI.D
(Rev. 6, Aug. 2005)), the decision supported by the Eggert opinion is not
10 An argument can be made that in North American Container the limitation
requiring that the “inner walls” be “generally convex” (patent claim 1) was
substituted by a related limitation in the reissue claim (29), “wherein the
diameter of said re-entrant portion is in the range of 5% to 30% of the
overall diameter of said side wall.” North American Container at 1341-42,
75 USPQ2d at 1550. The “re-entrant portion” included the lowermost points
of the inner walls. Id. at 1348, 75 USPQ2d at 1555. However, it appears the
claims were not argued as being materially narrowed in other respects to
avoid recapture. See id. at 1349-40, 75 USPQ2d at 1556. Moreover, the
“re-entrant portion” limitation in the reissue claim was already present in
patent claims depending from a patent claim containing the limitation
requiring that the inner wall portions be “generally convex” (see id. at 1341-
42, 75 USPQ2d at 1549-50), and thus would not have been the type of
substitute found to avoid recapture in Eggert or Ball Corp.
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