In what circumstances will a defendant deny an applicant a right to amend or amend the description of an invention to include an entire element which had been omitted from the original statement?

Finally, the defendant insists that the applicant broadened the scope of his invention when he added the passage heretofore quoted in the statement and added new claims for nonelastic 'strikers.' The rule that an applicant must not introduce a new invention cannot be applied with dialectical rigidity, or it would forbid any change in claims which introduced any new element, for all elements of a claim are necessary parts of the invention. The case at bar is no different from [247 F. 329.] Hobbs v. Beach, 180 U.S. 383, 395, 21 Sup.Ct. 409, 45 L.Ed. 586, where an entire element was omitted in an amended claim, which had been inserted in the original. If the whole disclosure remains unchanged, and no intervening rights have arisen we do not cut so fine. It may be that the rule is no more than one of degree; but we know of no cases which forbid the omission of elements, even though they result in expansion, when the disclosure readily suggests the change. We think it no objection that the suggestion may arise from a further knowledge of the art which discloses that broader claims always were possible, so long as there are no intervening rights. In such cases the specifications suggest the change, but the applicant's mistake upon what preceded him has deceived him. This he may correct, at least when the departure is not too wide. In the case at bar, the change was no more than to omit an improved form of the striker; the specification readily suggested the inclusion of any form of striker.

The decree is affirmed, with costs.