Appeal No. 2005-0642
Application No. 09/568,278
(a) the application claim which was canceled or amended
and
(b) the patent claim which was ultimately issued?
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
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