Appeal No. 2005-0841
Application No. 08/230,083
Furthermore, the "spiral conveyance path" and "high
humidity steam" limitations are not aspects of the
invention that were overlooked during prosecution of the
original patent. To the contrary, as just explained,
these aspects were included in original claim 1.
Additionally, with regard to the "spiral conveyance path"
limitation, original dependent claim 12 explicitly
recites "a spiral path." '047 patent, col. 6, l. 60. In
prosecuting the original patent, Williams pointed out
these features in an attempt to overcome the Examiner's
obviousness rejection. Hester cannot now argue that
Williams overlooked these aspects during the prosecution
of the original patent application. In conclusion, this
is not a case which involves the addition of material
limitations that overcome the recapture rule.
In effect, Hester, through eight years of reissue
proceedings, prosecuted Williams' original patent
application anew, this time placing greater emphasis on
aspects previously included in the original patent claims
and removing limitations repeatedly relied upon to
distinguish the prior art and described as "critical" and
"very material" to the patentability of the invention.
The reissue statute is to be construed liberally, but not
that liberally. The realm of corrections contemplated
within § 251 does not include recapturing surrendered
subject matter, without the addition of
materially-narrowing limitations, in an attempt to
'custom-fit' the reissue claims to a competitor's
product.
No doubt if two patent attorneys are given the task of
drafting patent claims for the same invention, the two
attorneys will in all likelihood arrive at somewhat
different claims of somewhat different scope. And such
differences are even more likely when, as here, the
second attorney drafts the new claims nearly a decade
later and with the distinct advantage of having before
him the exact product offered by the now accused
infringer. This reality does not justify recapturing
surrendered subject matter under the mantra of "failure
to appreciate the scope of the invention." The
circumstances of the case before us simply do not fit
within the concept of "error" as contemplated by the
reissue statute. See Mentor, 998 F.2d at 996, 27 USPQ2d
at 1525 ("Error under the reissue statute does not
include a deliberate decision to surrender specific
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