Appeal No. 2004-0659
Application No. 09/111,978
We believe North American Container stands for the proposition that it is (2) and not (1).
Accordingly, we hold that it is (2).
(7)
CLEMENT PRINCIPLES ARE NOT PER SE RULES
Our reading of our appellate reviewing court’s recapture opinions, as a whole,
suggests that the Clement steps should not be viewed as per se rules. For example, we
note the following in Clement, 131 F.3d at 1469, 45 USPQ2d at 1164:
Although the recapture rule does not apply in the absence of evidence that
the applicant’s amendment was “an admission that the scope of that claim
was not in fact patentable,” Seattle Box Co. v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir. 1984),
“the court may draw inferences from changes in claim scope when other
reliable evidence of the patentee’s intent is not available,” Ball [Corp. v.
United States], 729 F.2d at 1436, 221 USPQ at 294. Deliberately
canceling or amending a claim in an effort to overcome a reference
strongly suggests that the applicant admits that the scope of the claim
before the cancellation or amendment is unpatentable, but it is not
dispositive because other evidence in the prosecution history may indicate
the contrary. See Mentor [Corp. v. Coloplast, Inc.], 998 F.2d at 995-96, 27
USPQ2d at 1524-25; Ball, 729 F.2d at 1438, 221 USPQ at 296; Seattle
Box Co., 731 F.2d at 826, 221 USPQ at 574 (declining to apply the
recapture rule in the absence of evidence that the applicant’s “amendment
... was in any sense an admission that the scope of [the] claim was not
patentable”); Haliczer [v. United States], 356 F.2d at 545, 148 USPQ at
569 (acquiescence in the rejection and acceptance of a patent whose
claims include the limitation added by the applicant to distinguish the
claims from the prior art shows intentional withdrawal of subject matter);
In re Willingham, 282 F.2d 353, 354, 357, 127 USPQ 211, 213, 215
(CCPA 1960) (no intent to surrender where the applicant canceled and
replaced a claim without an intervening action by the examiner).
Amending a claim “by the inclusion of an additional limitation [has]
exactly the same effect as if the claim as originally presented had been
canceled and replaced by a new claim including that limitation.” In re
Byers, 230 F.2d 451, 455, 109 USPQ 53, 55 (CCPA 1956). [Footnote and
citations to the CCPA reports omitted.]
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