Appeal 2006-1068
Reissue Application 08/425,766
attempt to recapture all the limitations claimed as critical during prosecution” (Id.,
at page 9).
The Appellants’ position is without persuasive merit for a number of
reasons.
First, the position is based on the presumption that, in Hester, the two claim
limitations discussed with respect to recapture were the only two limitations argued
during prosecution. However, it is by no means clear from the Hester opinion that
such a presumption is correct. In any event, we find nothing and the Appellants
identify nothing in this opinion which supports their proposition that Hester is or
should be “limited to those cases where there is an undisputable surrender of
subject, such as an attempt to recapture all the limitations claimed as critical during
prosecution” (Id.).
We perceive little if any convincing merit in the Appellants’ point that the
liquid filter limitation was only one of several which were argued during
prosecution of their applications. This is because the legal relevancy of the point is
questionable and because the point is outweighed by several countervailing facts
indicative of surrender. In this latter regard, surrender is evinced by the fact that,
during prosecution of their ‘419 and ‘474 applications, Appellants repeatedly
characterized the liquid filter limitation (as well as others) as critical. On the other
hand, not once during this prosecution was the liquid filter feature ever
characterized as, or otherwise indicated to be, a limitation unnecessary for
distinguishing over the prior art. For example, this claim feature was never
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