Appeal No. 2004-0659
Application No. 09/111,978
(11)
ADMISSIBLE EVIDENCE IN REBUTTAL SHOWING
As in the case of surrender when applying the doctrine of equivalents, a reissue
applicant should have an opportunity to rebut any prima facie case made by an examiner.
What evidence may an applicant rely on to rebut any prima facie case of
recapture?
We hold that the admissible rebuttal evidence generally should be limited to
(1) the prosecution history of the application which matured into the patent sought to be
reissued and (2) showings related to what was known by a person having ordinary skill in
the art at the time an amendment was made. Nevertheless, we cannot attempt to divine,
at this time, all evidence that might be relevant. As with other issues that come before
the USPTO, such as obviousness and enablement, the evidence to be presented will vary
on a case-by-case basis, as will the analysis of that evidence.
An applicant must show that at the time the amendment was made, one skilled in
the art could not reasonably have viewed the subject matter broader than any narrowing
amendment as having been surrendered. The showing required to be made by applicant
is consistent with the public notice function of claims. Nevertheless, some limited
extrinsic evidence may be relevant. However, extrinsic evidence unavailable to one of
ordinary skill in the art at the time of the amendment is not relevant to showing that one
skilled in the art could not reasonably have viewed the subject matter as having been
surrendered. Limiting the nature of the admissible evidence is believed to be consistent
with the Federal Circuit’s decision on remand following Festo II. Festo Corp. v.
Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359, 1367, 68 USPQ2d 1321, 1326
(Fed. Cir. 2003), cert. denied, 541 U.S. 988 (2004) (Festo III).
On remand, the Federal Circuit notes (Id. at 1367-70, 68 USPQ2d at 1326-29):
[W]e reinstate our earlier holding that a patentee’s rebuttal of the Warner-
Jenkinson presumption is restricted to the evidence in the prosecution
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