Appeal 2006-1068
Reissue Application 08/425,766
The applicability of Hester [i.e., the Hester decision] to the present case is
further bolstered by decisions in Southwall Technologies Inc. v. Cardinal IG Co.,
[54 F.3d 1570, 1583,] 34 USPQ2d [1673,] 1682 [(Fed. Cir. 1995)]:
Estoppel extends beyond the basis of patentability, however.
Clear assertions made during prosecution in support of
patentability, whether or not actually required to secure
allowance of the claim, may also create an estoppel.
and in Desper Products Inc. v. Qsound Labs Inc., [157 F.3d 1325, 1340,]
48 USPQ2d 1088[, 1099 (Fed. Cir. 1998)]:
The fact that the . . . reference could have been distinguished,
standing alone, on different grounds is immaterial . . . . The
public has a right to rely on the assertions made by a patent
applicant to secure allowance of its claims. Post-hoc, litigation-
inspired argument cannot be used to reclaim [abandoned]
subject matter.
The Examiner’s point is well taken. With respect to the issue of surrender, it
is irrelevant that the liquid filter limitation was only one of several claim features
argued during prosecution and that the limitation ultimately proved to be
unnecessary for distinguishing the claim from the prior art. As explained in
Norian Corp. v. Stryker Corp., 432 F.3d 1356, 1361-62, 77 USPQ2d 1242, 1247
(Fed. Cir. 2005), this is because:
[T]here is no principle of patent law that the scope of a surrender of subject
matter during prosecution is limited to what is absolutely necessary to avoid
a prior art reference that was the basis for an examiner’s rejection. To the
contrary, it frequently happens that patentees surrender more through
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