Appeal 2006-1068
Reissue Application 08/425,766
the word “critical” concerning the liquid filter limitation evince surrender of claim
scope which does not include this limitation.
This surrender is also evinced by arguments subsequently advanced in the
paper filed November 12, 1991. As noted at Finding 4, supra, the Appellants
presented arguments on page 4 of this paper that the liquid filter limitation of claim
1 in the ‘419 application “is not taught or suggested in any of the references” and
that “[n]othing in the prior art teaches or suggests Applicants’ claimed liquid filter .
. . . ”
We also agree with the Examiner that evidence of surrender was created by
the Appellants’ prosecution of their continuing ‘474 application. Specifically, as
explained by the Examiner on page 6 of the Answer mailed December 21, 1999
and as observed at Finding 6 above, the Appeal Brief filed October 29, 1992
repeatedly presented arguments that the liquid filter limitation (i.e., of independent
claim 1 in the continuing ‘474 application) distinguished over the prior art. These
arguments are quoted at Finding 6 and appear on pages 3, 5, 6, 7, and 8 of the
aforementioned Brief. Furthermore, in their concluding argument on page 8 of this
Brief (see the corresponding quotation at Finding 6), the Appellants again
characterized as “critical” the differences between their invention and the prior art,
and these differences included the liquid filter limitation of the claims then on
appeal.
To summarize the foregoing circumstances, during prosecution of both the
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