Ex Parte GREENE et al - Page 13



                Appeal 2006-1068                                                                                                         
                Reissue Application 08/425,766                                                                                           

                claims did not contain the limitations argued during prosecution and therefore                                           
                were contrary to the arguments on which the surrender was based.  Id., 142 F.3d at                                       
                1482, 46 USPQ2d at 1649.                                                                                                 
                        In many pivotal respects, the findings in this case parallel the facts of Hester.                                
                Similar to Hester, the Appellants’ reissue application claim 1 does not include the                                      
                liquid filter limitation in claim 1 of their ‘267 patent and accordingly the former is                                   
                broader than the latter in that respect.  This limitation, as with the Hester case, was                                  
                present in the originally filed independent claims prosecuted by Appellants (i.e., in                                    
                the ‘419 and ‘474 applications).  Moreover, during this prosecution (as during the                                       
                Hester prosecution), the Appellants repeatedly argued that the liquid filter                                             
                limitation distinguished their claims from the prior art.                                                                
                        For example, as correctly observed by the Examiner (e.g., see page 5 of the                                      
                answer mailed December 21, 1999) and as noted in Finding 3 above, the                                                    
                Appellants’ prosecution of the ‘419 application included repeated arguments in the                                       
                paper filed August 19, 1991 that neither of the applied prior art patents to Hadley                                      
                or Kent taught or suggested the liquid filter limitation of claim 1 (see the                                             
                aforequoted arguments from pages 3, 4, and 5 of this paper).  Indeed, on page 5 of                                       
                this paper (in reference to earlier arguments concerning various claim features                                          
                including the liquid filter limitation), it was argued “Applicants have shown that                                       
                each of the references relied on omit critical features of Applicants’ invention”                                        
                (emphasis added).  We agree with the Examiner that these arguments and use of                                            



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