Appeal No. 2004-0659
Application No. 09/111,978
should be considered in determining if a patentee has met its burden under
this third rebuttal criterion.
We interpret Festo III to generally, perhaps effectively, limit the admissible
rebuttal evidence to the prosecution history record and extrinsic evidence related to the
knowledge of the hypothetical person of ordinary skill in the art at the time of the
amendment. Admitting evidence not available to the public, such as an affidavit of an
attorney giving mental impressions from the attorney who made the amendment, would
undermine the public notice function of the patent and its prosecution history.
(12)
NON-RELEVANCE OF “INTERVENING RIGHTS”
We have not overlooked a possibility that an argument might be made that the so-
called intervening rights provision relating to reissues makes jurisprudence on the
doctrine of equivalents presumption inapplicable to reissue recapture rules. Our answer
as to the argument is similar to the answer given by the Federal Circuit in Hester with
respect to whether the doctrine of equivalents surrender principles have any applicability
to reissue surrender principles. Hester squarely held that they do. Moreover, mixing
“intervening rights” with “surrender” is like mixing apples with oranges or putting the
cart before the horse. A patentee seeking a reissue claim which is barred by recapture is
not entitled to a reissue patent under 35 U.S.C. § 251. If there is no reissue patent, there
can be no intervening rights.
(13)
PUBLIC NOTICE
We believe that any recapture analysis must be bottomed principally on a “public
notice” analysis that can occur only after a record becomes “fixed.” In the case of a
patent, the “claims” and the “prosecution history” become fixed at the time the patent is
issued--not during “fluid” patent prosecution where claims and arguments can change
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