Appeal No. 2005-0841
Application No. 08/230,083
(2) canceling first and second claims (claims 1 and 2
in this case) and replacing both with a third
claim (claim 15 in this case) combining all
limitations of the first and second claims.
Apart from the rules which govern practice in patent cases
before the USPTO, applicant's argument would appear to be
foreclosed by In re Byers, 230 F.2d 451, 455, 109 USPQ 53, 55
(CCPA 1956) ("the inclusion of an additional limitation [has]
exactly the same effect as if the claim as originally presented
had been canceled and replaced by a new claim including that
limitation."). Byers is entirely consistent with the Federal
Circuit's in banc decision in Honeywell Int'l, Inc. v. Hamilton
Sundsrand Corp., 370 F.3d 1131, 71 USPQ2d 1065 (Fed. Cir. 2004),
cert. denied, 125 S. Ct. 2928 (2005) (amending a first
independent claim which has been rejected over the prior art by
incorporating the limitations of a second dependent claim which
had not been rejected, held to be an amendment involving
"surrender" in the context of the doctrine of equivalents).
See also, Deering Precision Instruments, L.L.C. v. Vector
Distribution Systems, Inc., 347 F.3d 1314, 1325, 68 USPQ2d 1716,
1723-24 (Fed. Cir. 2003), cert. denied, 540 U.S. 1184 (2004),
where the Federal Circuit states:
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