Appeal No. 2005-0642
Application No. 09/568,278
could not reasonably be expected to have drafted a claim that would
have literally encompassed the alleged equivalent (emphasis added).
The same policy considerations that prevent a patentee from urging
equivalents within what the Supreme Court refers to as “surrendered territory”
should prima facie prohibit the patentee from being able to claim subject matter
within the surrendered territory in reissue. Accordingly, the “surrendered subject
matter” that may not be recaptured through reissue should be presumed to include
subject matter broader than the patent claims in a manner directly related to (1)
limitations added to the claims by amendment (either by amending an existing
claim or canceling a claim and replacing it with a new claim with that limitation) to
overcome a patentability rejection and (2) limitations argued to overcome a
patentability rejection without amendment of a claim. These presumptions are
believed to place practical and workable burdens on examiners and applicants.
(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.
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