Interference No. 103,379
Decision on Reconsideration
step in the process which was described and claimed as
essential in the original patent." 315 U.S. at 677. 8
Likewise, in Ballew the District of Columbia Court of Appeals
held that "we have no basis
for characterizing as clearly erroneous the finding of the
District Court that the claims in the reissue application
omitted essential elements of the original patent and were
drawn to an invention different from that intended to be
secured by the original patent." 129 USPQ at 50. For the
reasons given in the Decision at pages 40-47, we remain of the
view that the artisan would not have understood the extension
wire feature to be an essential part of Seifert's invention.
E. Dance's "recapture rule" argument
Dance contends our conclusion (Decision at 49) that
Seifert made no argument during prosecution which amounts to a
surrender of the invention recited in the reissue claims,
We should also point out that in contrast to current8
35 U.S.C. § 251, which requires that the reissue claims be "for
the invention disclosed in the original patent," the reissue
statute involved in U.S. Indus., i.e., 35 U.S.C. § 46, required
that the reissue claims be for the "same invention." Hester,
142 F.2d at 1485, 46 USPQ2d at 1651; In re Amos, 953 F.2d 613, 619
n.2, 21 USPQ2d 1271, 1275 n.2 (Fed. Cir. 1991).
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