DANCE V. SEIFERT et al. - Page 12




           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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