Appeal 2005-0801
Application 09/848,628
made. Nevertheless, we cannot attempt to divine, at this time, all evidence
that might be relevant. As with other issues that come before the USPTO,
such as obviousness and enablement, the evidence to be presented will vary
on a case-by-case basis, as will the analysis of that evidence.
An Applicant must show that at the time the amendment was made,
one skilled in the art could not reasonably have viewed the subject matter
broader than any narrowing amendment as having been surrendered. The
showing required to be made by Applicant is consistent with the public
notice function of claims. Nevertheless, some limited extrinsic evidence
may be relevant. However, extrinsic evidence unavailable to one of ordinary
skill in the art at the time of the amendment is not relevant to showing that
one skilled in the art could not reasonably have viewed the subject matter as
having been surrendered. Limiting the nature of the admissible evidence is
believed to be consistent with the Federal Circuit’s decision on remand
following Festo II. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
344 F.3d 1359, 1367, 68 U.S.P.Q.2d 1321, 1326 (Fed. Cir. 2003), cert.
denied, 541 U.S. 988 (2004) (Festo III).
On remand, the Federal Circuit notes (Id. at 1367-70, 68 U.S.P.Q.2d
at 1326-29):
[W]e reinstate our earlier holding that a patentee’s rebuttal of
the Warner-Jenkinson presumption is restricted to the evidence
in the prosecution history record. Festo [I], 234 F.3d at 586 &
n.6; see also Pioneer Magnetics, 330 F.3d at 1356 (stating that
only the prosecution history record may be considered in
determining whether a patentee has overcome the Warner-
63
Page: Previous 56 57 58 59 60 61 62 63 64 65 66 67 68 69 70 Next
Last modified: November 3, 2007