Appeal 2005-0801
Application 09/848,628
to the prosecution history. Thus, whether the patentee has
established a merely tangential reason for a narrowing
amendment is for the court to determine from the prosecution
history record without the introduction of additional evidence,
except, when necessary, testimony from those skilled in the art
as to the interpretation of that record.
. . . 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 have any applicability to reissue
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