Interference No. 104,649
Page No. 36
Keagy's corresponding claims such that one skilled in the art would recognize that Keagy was in
possession" of what is now claimed.
b. The '098 Prosecution History Does Not Necessarily Limit
Keagy's Written Description for Keagy's Corresponding
Claims.
With respect to the '098 prosecution history, Zhou has cited Desper Products Inc. v.
QSound Labs Inc., 157 F.3d 1325, 48 USPQ2d 1088 (Fed. Cir. 1998) as standing for the
proposition that:
[I]t is firmly established law that when an applicant clearly distinguishes the
claimed invention in one application from the teachings of the prior art in
arguments made to the Patent Office, such arguments operate as an explicit
surrender of certain subject matter, and the applicant's limiting remarks in that
application cannot be avoided by filing a continuation application with different
claims.
(Paper No. 41, p. 6).
It is apparent that Zhou has overstated the decision in Desper. Desper involved an appeal
from a district court decision granting summary judgment of norrinfringement in favor of Desper.
The main issues on appeal involved claim construction and prosecution history estoppel. In
construing the claims of two QSound's patents ('462 and a divisional '860), the Federal Circuit
noted that identical claim language had been used and relied upon by QSound during the
prosecution of a divisional application. 1d. at 1330-31, 48 USPQ2d at 1091-92. Moreover, with
respect to estoppel under the doctrine of equivalents, the Federal Circuit stated that the estoppel
applied with equal force to the identical claim language appearring in the
- 'divisional '8dppvtcnt.
Id. at 1339 n.6, 48 USPQ2d at 1099 n.6. Zhou's citation to SciMed Life Systems Inc. v.
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