Appeal No. 2005-0642
Application No. 09/568,278
. . . When at all possible, determination of the third rebuttal criterion
should also be limited to the prosecution history record. . . . We need
not decide now what evidence outside the prosecution history record,
if any, 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
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