Appeal No. 2004-0659
Application No. 09/111,978
Appellant (Brief, page 12) directs our attention to In re Richman, 409 F.2d 269, 276, 161
USPQ 359, 363-64 (CCPA 1969), and In re Wadsworth, 27 CCPA 735, 107 F.2d 596, 43
USPQ 460, 464 (CCPA 1939), for support of this position. Although we acknowledge
the statements made by the Court in the cases cited by appellant, we disagree that those
are the controlling case law. We note that although Hester and Pannu do not explicitly
overrule Richman and Wadsworth, they do indicate a shift in the position of the Federal
Circuit and are, therefore, controlling. Similarly, appellant (Brief, page 13) points to Ball
Corp. v. United States, 29 F.2d 1429, 1437; 221 USPQ 289, 295 (Fed. Cir. 1984), as
evidence that "[a] patentee may obtain a reissue claim that varies materially from a claim
originally surrendered even though it omits a limitation added to obtain issuance."
However, as noted supra, there is a suggestion from the analysis that there must be a
narrowing that relates to that omitted limitation. In addition, although Ex Parte Eggert,
67 USPQ2d 1716 (Bd. Pat App & Int. 2003), (not argued by appellant) would appear to
support appellant's position, Eggert differs from the present case in that the limitation
added for patentability was broadened, not deleted, in the reissue claims. Therefore, we
do not view Eggert as dispositive of the issues in the present case. Further, as noted
supra, Eggert is not consistent with the current rationale of the Federal Circuit and should
no longer be followed.
As explained supra, in the original application for patent, appellant added three
limitations to the claims and argued how each limitation differed from the prior art
applied against the claims. In other words, appellant’s statements to the contrary
(Request for Rehearing, page 4) notwithstanding, appellant argued that the added
limitations were critical to patentability. In Hester, Williams (the inventor) likewise had
argued that two limitations were critical with regard to patentability. The Court held that
those arguments "constitute[d] an admission by Williams that these limitations were
necessary to overcome the prior art," and that "Williams, through his admission . . .
surrendered claim scope that does not include these limitations." Hester, 46 USPQ2d at
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