Appeal No. 2001-2689
Application No. 09/215,021
at the time that the patent issued, and that the claims
could not embrace “after arising equivalents” by resort
to the doctrine of equivalents. The proposed reissue
claims, by reciting the specific structure in the
preferred embodiments rather that the means-plus-
function language of the patent claims would, however,
potentially cover such “after arising equivalents”
under the doctrine of equivalents. Thus, in the
language of Tillotson, the proposed claims would
contain within their scope a conceivable apparatus
which could not have been held to infringe the original
patent. This is a broadening of the patent claims.
[Answer, pages 4-5.]
Discussion
(1)
Fundamental to the examiner’s theory of unpatentability
under 35 U.S.C. § 251 is the belief that an infringement analysis
under the doctrine of equivalents may be used when determining
the scope of a claim in a reissue proceeding.
In the reply brief, appellant cites In re Freeman, 30 F.3d
1459, 1464, 31 USPQ2d 1444, 1447 (Fed. Cir. 1994) for the
proposition that the test for determining whether a new claim
enlarges the scope of an original claim in reexamination
proceedings under 35 U.S.C. § 305 is the same as that under the
two-year limitation for reissue applications enlarging claims
under the last paragraph of 35 U.S.C. § 251. Appellant further
cites Thermalloy, Inc. v. Aavid Eng’g, Inc., 121 F.3d 691, 694,
43 USPQ2d 1846, 1849 (Fed. Cir. 1997) for the proposition that
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