Appeal 2005-0801
Application 09/848,628
(10)
Relevance of prosecution history
“Surrendered subject matter” is defined in connection with
prosecution history estoppel in Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co., 535 U.S. 722, 733-34, 122 S. Ct. 1831, 1838, 62 U.S.P.Q.2d
1705, 1710-11 (2002) (Festo II):
The doctrine of equivalents allows the patentee to claim those
insubstantial alterations that were not captured in drafting the
original patent claim but which could be created through trivial
changes. When, however, the patentee originally claimed the
subject matter alleged to infringe but then narrowed the claim in
response to a rejection, he may not argue that the surrendered
territory comprised unforeseen subject matter that should be
deemed equivalent to the literal claims of the issued patent. On
the contrary, “[b]y the amendment [the patentee] recognized
and emphasized the difference between the two phrases[,] ...
and [t]he difference which [the patentee] thus disclaimed must
be regarded as material.” Exhibit Supply Co. v. Ace Patents
Corp., 315 U.S. 126, 136-37, 62 S. Ct. 513, 518-19 [52 USPQ
275, 279-80] (1942).
Festo II goes on to comment, 535 U.S. at 737-41, 122 S. Ct. at 1840-
42, 62 U.S.P.Q.2d at 1712-14:
[Prosecution history estoppel’s] reach requires an examination
of the subject matter surrendered by the narrowing amendment.
[A] complete bar [would avoid] this inquiry by establishing a
per se rule; but that approach is inconsistent with the purpose of
applying the estoppel in the first place to hold the inventor to
the representations made during the application process and to
the inferences that may reasonably be drawn from the
amendment (emphasis added).
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