Appeal No. 2005-0841
Application No. 08/230,083
were broader than the patent claims. The court noted (id. at 849,
151 USPQ at 348) that since there is no objection to the appealed
claims based on the prior art, they did not think the statement in
Shepard,42 arising from the facts therein stated, is applicable
here. The court then stated that Shepard may be support for the
rule that "one who deliberately adds a limitation to avoid the
prior art cannot omit that limitation in reissue claims so as to
encroach upon the prior art, but that is not the situation here as
the board's opinions clearly point out." Lastly, the court found
(id. at 850, 151 USPQ at 349) as a factual matter that a mistake
occurred in the prosecution of the patent application. That
mistake was in not then presenting the appealed claims with the
result that the appellant's patent claimed less than he had the
right to claim. The court also found that the record establishes
that the appellant erroneously considered he was securing
protection commensurate with the invention disclosed in the
original application. There was no evidence that the appellant
42 Shepard v. Carrigan, 116 U.S. 593, 597 (1886) states that
[w]here an applicant for a patent to cover
a new combination is compelled by the
rejection of his application by the patent-
office to narrow his claim by the
introduction of a new element, he cannot
after the issue of the patent broaden his
claim by dropping the element which he was
compelled to include in order to secure his
patent.
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