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 13Page: Previous 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 NextLast modified: November 3, 2007