Ex parte Eggert

Case Number: CLB0030

Date: 05.29.2003

Citation: 67 U.S.P.Q. 2d 1716 (Bd. Pat. App. & Inter. 2003)

An expanded panel of the Board in a 5-4 decision held that in a reissue patent application, there is no per se prohibition against eliminating or broadening a claim limitation that was added during prosecution of the original patent to overcome a prior art rejection. A reissue claim that omits or broadens such a limitation may avoid the reissue recapture rule if the reissue claim is materially narrowed in other respects. Proper application of recapture rule thus requires fact-specific analysis in each case, not use of per se rule.

Download PDF Return to Case Law Briefs Main Page