Appeal 2006-1068
Reissue Application 08/425,766
matter surrendered via arguments made during their successful prosecution efforts
to obtain the ‘267 patent.
The Appellants’ Position in Support of Reissue
The Appellants’ response to the Examiner’s rejection includes only
argument, no evidence. Specifically, it is the Appellants’ fundamental contention
that the facts of their case meaningfully differ from those of Hester. In this regard,
the Appellants correctly point out that the arguments made during prosecution of
their ‘419 and ‘474 applications involved claim features other than the liquid filter.
According to the Appellants, the liquid filter limitation was only one of several that
were argued as distinguishing over the prior art. In contrast, the Appellants state
that “the applicants in Hester Industries repeatedly emphasized the two claim
limitations, it later tried to recapture as the distinguishing factors over the prior art”
(Brief, filed September 7, 1999, page 6). The Appellants emphasize this contrast
by urging that, during prosecution of their applications, they “did not in any way
express the liquid filter element in such a manner that the Applicants made it the
primary basis for distinguishing over the prior art[; rather,] [i]t is [sic, was] simply
argued as one of several distinctions” (Id., at page 8). In summary, it is the
Appellants’ position that “Hester Industries needs to be limited to those cases
where there is an undisputable surrender of subject, such as an
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