Interference No. 103,379
Decision on Reconsideration
and Ballew v. Watson, 129 USPQ 48, 49-50 (D.C. Cir 1961),
cited in Dance's opening brief at 16, which are characterized
in Dance's request for reconsideration (at 5) as "stand[ing]
for the principle that removal of language from the
specification [sic, claims] introduces 'new matter' and is
contrary to the reissue statute." This is not a fair
characterization of the holdings in these cases, which we
understand to mean that reissue claims may not be broadened to
omit features described as essential in the original patent.
For example, while Dance's opening brief (at 16) correctly
quotes U.S. Indus., the most recent of the cited Supreme Court
cases, as stating that
[t]his court has uniformly held that the
omission from a reissue patent of one of
the steps or elements prescribed in the
original, thus broadening the claims to
cover a new and different combination,
renders the reissue void, even though the
result attained is the same as that brought
about by following the process claimed in
the original patent.
(emphasis added) 315 U.S. at 678, the phrase "prescribed in
the original" must be read in conjunction with the Court's
holding that "[w]e think it plain that the reissue omitted a
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