Appeal 2006-1068
Reissue Application 08/425,766
‘419 application and the continuing ‘474 application, the Appellants repeatedly
argued that their liquid filter limitation distinguished over the prior art and
repeatedly characterized this claim feature as critical. These factual circumstances,
like the corresponding circumstances in Hester, establish a prima facie case that the
Appellants, by way of repeated arguments, disavowed and thereby surrendered
claim scope not restricted to the argued liquid filter limitation.4 Likewise as in
Hester, it is clear that the surrendered subject matter has crept back into appealed
reissue application claim 1 by virtue of the fact that the claim does not contain the
liquid filter limitation and accordingly is contrary to the arguments on which the
surrender is based.
It follows that the above discussed facts of this appeal establish a prima facie
case that appealed claim 1 constitutes an attempt by Appellants to recapture subject
4As previously noted at Finding 5, this limitation was not argued by Appellants in
their June 17, 1992 response to a prior art rejection. This sole instance of
nonargument does not neutralize the inference of surrender evinced by the multiple
liquid filter arguments presented during prosecution of the ‘419 and ‘474
applications.
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