Appeal No. 2004-0659
Application No. 09/111,978
(10)
RELEVANCE OF PROSECUTION HISTORY
“Surrendered subject matter” is defined in connection with prosecution history
estoppel in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 733-34,
122 S. Ct. 1831, 1838, 62 USPQ2d 1705, 1710-11 (2002) (Festo II):
The doctrine of equivalents allows the patentee to claim those
insubstantial alterations that were not captured in drafting the original
patent claim but which could be created through trivial changes. When,
however, the patentee originally claimed the subject matter alleged to
infringe but then narrowed the claim in response to a rejection, he may not
argue that the surrendered territory comprised unforeseen subject matter
that should be deemed equivalent to the literal claims of the issued patent.
On the contrary, “[b]y the amendment [the patentee] recognized and
emphasized the difference between the two phrases[,] ... and [t]he
difference which [the patentee] thus disclaimed must be regarded as
material.” Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136-37,
62 S. Ct. 513, 518-19 [52 USPQ 275, 279-80] (1942).
Festo II goes on to comment, 535 U.S. at 737-41, 122 S. Ct. at 1840-42, 62
USPQ2d at 1712-14:
[Prosecution history estoppel’s] reach requires an examination of the
subject matter surrendered by the narrowing amendment. [A] complete
bar [would avoid] this inquiry by establishing a per se rule; but that
approach is inconsistent with the purpose of applying the estoppel in the
first place to hold the inventor to the representations made during the
application process and to the inferences that may reasonably be drawn
from the amendment (emphasis added).
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A patentee’s decision to narrow his claims through amendment may be
presumed to be a general disclaimer of the territory between the original
claim and the amended claim. Exhibit Supply, 315 U.S., at 136-137, 62 S.
Ct. 513 (“By the amendment [the patentee] recognized and emphasized
the difference between the two phrases and proclaimed his abandonment
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