Appeal No. 2005-1674
Application 09/613,153
least one of price/sales ratio and a price/earnings ratio for each stock" as an attempt to
distinguish the claims from Kiron based on the "at least one of [a] price/sales ratio and a
price/earnings ratio" limitation and as a surrender of the right to have claims which are not so
limited. Appellant's mere quotation of claim language which includes the limitation in question
falls well short of the type of argument held to constitute a surrender in Hester, 142 F.3d at 1482,
46 USPQ2d at 1649:
Williams repeatedly argued that the "solely with steam" and "two sources
of steam" limitations distinguished the original claims from the prior art.
These were Williams' primary bases for distinguishing the broadest claim,
independent claim 1, from the prior art. At no less than 27 places in six
papers submitted to the Patent Office, Williams asserted that the "solely
with steam" limitation distinguished the claimed invention from the prior
art, and Williams did the same with respect to the "two sources of steam"
limitation at no less than 15 places in at least five papers.
Williams argued that each of these limitations was "critical" with
regard to patentability, and Williams further stated that the "solely with
steam" limitation was "very material" in this regard. In essence, these
repeated arguments constitute an admission by Williams that these
limitations were necessary to overcome the prior art. Indeed, when the
Board reversed the Examiner's rejection of the original claims, these were
the primary bases indicated for patentability. Williams, through his
admission effected by way of his repeated prosecution arguments,
surrendered claim scope that does not include these limitations.
The rejection for reissue recapture is accordingly reversed with respect to all of the
rejected claims.
REVERSED
WILLIAM F. PATE, III )
Administrative Patent Judge )
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