Appeal No. 1997-0897
Application No. 08/227,992 Page 6
length, and that “changing” is random and unfocused and cannot
reasonably be considered to contribute to adjustment, which
regulates the focus. In the examiner’s opinion, appellants have
“explicitly disclaimed” (answer, page 4) adjusting the focal
length, and that appellants admit that “adjusting” is not
enabled.
Appellants disagree with the examiner's assertion (brief,
pages 13 and 14) that they have disclaimed the function of
adjusting, or that adjusting is not enabled, as asserted by the
examiner. Appellants assert that the term “change” is a broader
term than “adjust.”
At the outset, we note that there has been no disclaimer or
acquiescence by appellants because the examiner’s rejection has
been appealed. In addition, as stated by the court in Abbott
Laboratories v. Torpharm, Inc, Apotex, Inc., and Apotex Corp.,
02-1014, decided August 13, 2002 (Fed. Cir.), the court stated
that:
[P]rosecution history may limit claim scope if the
patentee disclaimed or disavowed a particular
interpretation of the claims during prosecution.
Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448,
452, 227 USPQ 293, 296 (Fed. Cir. 1985). This
principle does not, however, mean that any words
appearing in the prosecution history but not in the
issued claims are forever banished. The prosecution
history inquiry asks not what words the patentee
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007