Appeal No. 2001-2689
Application No. 09/215,021
the Federal Circuit has stated that the doctrine of equivalents
is irrelevant when determining whether the scope of the claims
has been enlarged in reexamination proceedings under 35 U.S.C.
§ 305. Appellant then concludes (reply brief, pages 2-3) that
[b]ecause the test for determining whether a new claim
enlarges the scope of the originally issued claims is
the same for both reissue proceedings under § 251 and
reexamination proceedings under § 305 and because an
infringement analysis under the doctrine of equivalents
is irrelevant to the issue of whether claims have been
enlarged under § 305, the doctrine of equivalents is
also irrelevant to the issue of whether the claims have
been enlarged under § 251.
Appellant’s argument appears to be sound, and has not been
specifically addressed by the examiner. Our reading of
Thermalloy, Inc. v. Aavid Eng’g, Inc., 121 F.3d at 694, 43 USPQ2d
at 1849 indicates that the court reasoned that because the
doctrine of equivalents involves going beyond any permissible
interpretation of the claim language, i.e., involves determining
whether an accused product is “equivalent” to what is described
by the claim language, and because reexamination under § 305
involves no accused product, the doctrine of equivalents has no
place in reexamination proceedings. By extension, the same
reasoning would apply in reissue proceedings. In re Freeman,
30 F.3d at 1464, 31 USPQ2d at 1447 (test for determining whether
a new claim enlarges the scope of an original claim is the same
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