Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
inconsistent with any known Federal Circuit decision. Eggert thus remains
precedent binding on this Board.
Certainly, language in recent Federal Circuit cases reflects a shift in
emphasis in the recapture inquiry, casting doubt on the continuing viability
of earlier precedents such as Ball Corp. See, e.g., North American
Container at 1350, 75 USPQ2d at 1557:
Moreover, that the reissue claims, looked at as a whole, may be
of “intermediate scope” is irrelevant. As the district court
recognized, the recapture rule is applied on a limitation-by-
limitation basis, and the applicant’s deletion of the “generally
convex” limitation clearly broadened the “inner wall”
limitation.
Cf. Ball Corp. at 1437, 221 USPQ at 295:
The proper focus is on the scope of the claims, not on the
individual feature or element purportedly given up during
prosecution of the original application. The trial judge quite
properly focused on the scope of the claims and we find no
error in this respect. He determined that the reissue claims were
intermediate in scope -- broader than the claims of the original
patent yet narrower than the canceled claims.
Presented with an Eggert set of facts, the Federal Circuit today might
very well reach a conclusion different from the Board. Eggert represents an
approach that does, to some extent, simplify the job of the patent examiner.
However, Eggert, by its holding, endorses a per se rule that applicants need
only add a broader form of the limitation that was added to overcome a prior
art rejection in the original prosecution to get a “free pass” from recapture in
broadening reissues, without further inquiry. But until there is more
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