Interference No. 104,649
Page No. 37
Advanced Cardiovascular Systems, Inc., 242 F.3d 1337, 58 USPQ2d 1059 (Fed. Cir. 2001) is
also unavailing as it involves claim construction where "all embodiments" were said to have a
particular structure. It is not apparent from Desper or SciMed that an applicant cannot seek a
broader claim in a continuation application or that an applicant cannot file a continuation
application that seeks to claim a different embodiment of the invention.
As to the comments made during the prosecution of Keagy's '098 application, Zhou, as
the moving party, has the burden of proof to show that it is entitled to the relief sought. As part
of this burden, Zhou needs to demonstrate that the comments made during the prosecution of
Keagy's '098 grandparent application limit the manner in which the written description can be
construed for the embodiment presently claimed by Keagy. Thus, Zhou needs to demonstrate
that the "refracted" embodiment claimed in Keagy's '098 application is the same embodiment
presently claimed and/or that the same claim language is employed. The mere fact that Keagy's
'098 prosecution history involved amending the then pending claims to state "refracted" rather
then "reflected" is not sufficient evidence that Keagy's presently claimed embodiment excludes
light reflected by total internal reflection.
An applicant may file an application describing more than one embodiment. For
example, an applicant may describe two separate and distinct embodiments and present claims to
these distinct embodiments. That an applicant can choose to employ different claim scope for
two distinct embodiments is a well established practice. In such a situation, the prosecution
history of one embodiment may or may not affect the claim scope of the second, distinct
embodiment. On the facts presented, Zhou has not demonstrated that the comments made in
Page: Previous 33 34 35 36 37 38 39 40 41 42 43 44 45 46 47 Next
Last modified: November 3, 2007