8. STOLL: Original Claims 4, 8 v. Issued Claim 1, cont. 4. A linear motor according to any of claims 1 to 3, wherein the sealing means of the piston comprise sealing rings and the piston is provided with sliding guide rings near the sealing rings. 8. A linear motor according to any of the preceding claims wherein the driven member is provided with a sleeve made of magnetizable material which encircles the hollow cylindrical assembly of the magnet arrangement. 1.... said sleeve having... second annular magnets... in magnetically attracting relation to first... annular magnets... said sleeve having... second sealing rings located axially outside said second... magnets for wiping the external wall surface

9. CARROLL: Original Claim 1 v. Reissued Claim 9 1. A device for moving articles comprising a cylinder of non-ferrous material a piston including a... magnet... a body disposed outside and adjacent to said cylinder said body including a... magnet which substantially surrounds the cylinder... 9. A device for moving articles, which comprises a hollow cylinder... of non-ferrous material a piston mounted in the interior of the hollow cylinder including a central mounting member... magnets mounted on central mounting member and a pair of resilient sealing rings situated near opposite axial ends of the central mounting member and engaging the cylinder to effect a fluid-tight seal... a body mounted on the exterior of the hollow cylinder... including... magnets surrounding the cylinder...

10. TEST: Does PHE Bar the Application of DOE to a Particular Amendment? QUESTIONIF NOIF YES 1Is the amendment narrowing?No PHEGo to 2. 2Does the prosecution history reveal reason for the amendment? A substantial reason related to patentability is presumed. Also presumed is a total surrender of territory between the original and amended limitations. Go to 4. Go to 3. 3Was the amendment made for a reason substantially related to patentability? No PHEA total surrender of territory between the original and amended limitations is presumed. Go to 4.

11. TEST: Does PHE Bar the Application of DOE to a Particular Amendment? 4Can the patentee demonstrate: a. Objective unforeseeability at the time of the amendment, to a person of ordinary skill in the art, b. No more than a tangential relation between the amendment and the equivalent in question, or c. Some other reason suggesting that the patentee could not reasonably have been expected to have described the alleged equivalent ? PHE bars the application of DOE completely for the accused element. Patentee has rebutted the presumption of a total surrender of all territory between the original claim limitation and the amended claim limitation.

12. FESTO 2003 SMC’S ALUMINUM SLEEVE (1) “Festo argues that one skilled in the art... would not have foreseen the interchangeability of an aluminum alloy sleeve and a magnetizable alloy sleeve in Stoll’s small gap design... Factual issues thus exist...” (2) “[P]rosecution history reveals no reason for the ‘magnetizable’ amendment.” (3) “Festo argues that... Stoll could not reasonably have been expected to... cover... an inferior and unacceptable design.... there was no linguistic or ‘other’ limitation to prevent Stoll from describing the accused equivalent.”

13. FESTO 2003 SMC’S SEALING RING (“ Stoll amended claim 1 to recite ‘first’... and ‘second sealing rings.’ It must therefore be presumed that Stoll surrendered all ‘sealing means’ other than two-ring structures.”) (1) “Festo argues that SMC’s two-way sealing ring was an inferior and unacceptable equivalent of the one-way sealing rings located at each end of the piston... Factual issues thus exist” (2) “[T]he sealing ring amendments in both the Stoll and Carroll patent were made to distinguish prior art patents. With respect to the Stoll patent... to distinguish two prior art patents that did not disclose sealing rings.... with respect to the Carroll patent... distinguished [a] reference by claiming a combination of features that included a pair of sealing rings.” (3) “Festo again argues that... patentees could not reasonably have been expected to... cover and inferior and unacceptable design.... it cannot be said that there was a linguistic or ‘other’ limitation...” (“Instead of reciting ‘first sealing means... and second sealing means’ or ‘a pair of... sealing rings,’ the patentees could have encompassed SMC’s sealing ring by claiming... ‘at least one sealing ring.’”)

14. TALBERT 2003 Original Claim 1 v. Issued Claim 1 (‘356 patent) 1. A gasoline fuel comprising hydrocarbons having an intermediate carbon range relative to gasoline which has a carbon range of C[4] – C[12]: said intermediate range being... the portion remaining when C[4] – C[12] gasoline has removed therefrom an effective amount of lower weight volatile components to substantially eliminate evaporative loss and explosion potential and an effective amount of higher weight to raise the burn rate of the remaining hydrocarbons to a level comparable to C[4]- C[12] gasoline. [No temperature range indicated.] 1. A low Reid Vapor Pressure liquid gasoline for use in a standard carbureted internal combustion engine: said gasoline comprising a priming agent and a hydrocarbon mixture having an intermediate carbon range consisting essentially of C[6] – C[10] hydrocarbons with C[9] and C[10] paraffinic hydrocarbons being present in the mixture; said gasoline having a boiling point range of 121 °F – 345 °F at 1 atmosphere pressure...

15. TALBERT 2003 Boiling point range of accused Unocal fuels: 373.8 °F – 472.9 °F “The [original Talbert] claims were rejected on references that showed gasoline of various hydrocarbon contents and boiling ranges, including the Hamilton reference which showed an upper boiling limit in the range of 390 °F – 420 °F.” Talbert claimed that the limitation applied only to gasifier applications, not standard carbureted fuel. However, the ‘356 specification teaches that standard carbureted fuel is the same as gasifier fuel except for a small amount of priming agent in the former.

16. TALBERT 2003 (1) “When the prior art embraces the alleged equivalent, and a narrowing amendment was made to avoid that equivalent, that subject matter cannot be found to have been unforeseeable at the time of the amendment.... The boiling range limits of the Unocal fuels... are directly within the space between the 345 °F limit of Talbert’s amended claims, and the 390 °F of the Hamilton reference.” (2) “The boiling range and carbon content were... the direct... reason for the narrowing amendments” (3) “[N]o ‘other reason’ for avoiding estoppel has been proferred.”