Appeal 2006-1068
Reissue Application 08/425,766
characterized as an alternative but unnecessary basis for patentability. Similarly,
the Appellants did not once in either of their applications present for prosecution
an independent claim which did not contain the liquid filter limitation.
A final point highlights the unacceptability of the Appellants’ position that
“Hester Industries needs to be limited to those cases where there is an undisputable
surrender of subject, such as an attempt to recapture all the limitations claimed as
critical during prosecution,” (Brief, filed September 7, 1999, page 9). It is the
point that, during prosecution of their applications, the Appellants argued as
critical distinctions over the prior art virtually all of the limitations recited in
claim 1 of their ‘267 patent (e.g., see the Brief, filed October 29, 1992 in the ‘474
application, in its entirety and the conclusion section thereof on pages 8-9
specifically). As a consequence, if surrender were to be restricted in the manner
urged by Appellants, there would be no possibility of
recapture of any kind under the circumstances of this case. The unacceptability of
such an outcome is self evident.
The Appellants’ position is unconvincing in yet another respect. In the
Examiner’s view, recapture is not avoided in this case merely because the liquid
filter limitation was only one of several claim features argued during prosecution
as distinguishing over the prior art. As support for this view, the Examiner makes
the following point on page 4 of his December 21, 1999 Answer:
18
Page: Previous 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Next
Last modified: November 3, 2007