Appeal No. 2001-2689
Application No. 09/215,021
in reissue applications and reexamination applications).
In light of the foregoing, we consider that the examiner has
not persuasively established that the doctrine of equivalents
should be utilized when determining the scope of a claim in a
reissue proceeding. The examiner’s failure in this regard is
fatal to the standing rejection, and constitutes a first reason
necessitating reversal.
(2)
In rejecting the appealed reissue claims, the examiner
contends that because the reissue claims replace means-plus-
function language with specific structure, they could potentially
cover after arising equivalents under the doctrine of
equivalents. However, given the file history of the present
application and the pronouncements of the Federal Circuit in the
recent case of Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
Co., 234 F.3d 558, 56 USPQ2d 1865 (Fed. Cir. 2000), it is
difficult for us to image a scenario in which a court would
resort to the doctrine of equivalents to expand the literal scope
of the reissue claims on appeal here in order to permit them to
embrace after arising equivalents. This is especially so given
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007