Appeal 2006-1068
Reissue Application 08/425,766
amendment than may have been absolutely necessary to avoid particular
prior art. In such cases, we have held the patentees to the scope of what they
ultimately claim, and we have not allowed them to assert that claims should
be interpreted as if they had surrendered only what they had to.
The Appellants seem to believe that the above discussed point is not
applicable to the circumstances of their case. In this regard, the Appellants
emphasize that “the present case is not a prosecution history estoppel case” and
argue that “the present case needs to be decided under the rules and holdings of
Hester Industries and its progeny, not prosecution history estoppel cases” (Reply
Brief, filed March 22, 2000, page 5).
We do not share the Appellants’ apparent belief that the principles of the
above cited decisions are restricted to prosecution history estoppel under the
doctrine of equivalents and therefore are not applicable to the reissue case under
consideration. As fully explained in Hester, 142 F.3d at 1481-82, 46 USPQ2d at
1649, “[t]he analogy [of prosecution history estoppel] is with the recapture rule,
which restricts the permissible range of expansion through reissue just as
prosecution history estoppel restricts the permissible range of equivalents under the
doctrine of equivalents.” Therefore, notwithstanding the Appellants’ contrary
view, we consider as well taken the Examiner’s point that the Appellants have
surrendered claim scope which does not include the liquid filter limitation even
though this limitation was only one of several argued during prosecution and even
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