Ex parte Eggert
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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.