Appeal No. 2005-0841
Application No. 08/230,083
overcame the prior art rejection, regardless of the scope of the
remaining limitations, avoids a bar by the recapture rule. To
summarize, a limitation added to overcome a prior art rejection
cannot be eliminated completely in a reissue claim unless it is
offset by a corresponding narrowing in the same area.
In Hester Industries Inc. v. Stein Inc., 142 F.3d 1472,
46 USPQ2d 1641 (Fed. Cir.), cert. denied, 525 U.S. 947 (1998),
the patentee eliminated completely, in a reissue application,
two limitations of the original claims that were argued as
distinguishing the claims over the prior art. The Federal
Circuit analyzed the prosecution history of the original patent
and determined that Williams, the inventor of Hester's patent,
had argued that "each of these limitations was 'critical' with
regard to patentability," 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." Id. at 1482, 46 USPQ2d at 1649. The Federal
Circuit stated, "We share the district court's discomfort with
Williams' attempt to remove, through reissue, the 'solely with
steam' and 'two sources of steam' limitations after having relied
so heavily on those limitations to obtain allowance of the
original patent claims over the prior art," referencing the
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