Appeal No. 2005-0841
Application No. 08/230,083
(2) the subject matter of an application claim which
was amended or canceled and, on a limitation-by-
limitation basis, the territory falling between
the scope of
(a) the application claim which was canceled or
amended and
(b) the patent claim which was ultimately issued?
We believe North American Container stands for the proposition
that it is (2) and not (1). Accordingly, we hold that it is (2).
(6)
Clement principles are not per se rules
Our reading of our appellate reviewing court's recapture
opinions, as a whole, suggests that the Clement steps should not
be viewed as per se rules. For example, we note the following in
Clement, 131 F.3d at 1469, 45 USPQ2d at 1164:
Although the recapture rule does not apply in the
absence of evidence that the applicant's amendment was
"an admission that the scope of that claim was not in
fact patentable," Seattle Box Co. v. Industrial Crating
& Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574
(Fed. Cir. 1984), "the court may draw inferences from
changes in claim scope when other reliable evidence of
the patentee’s intent is not available," Ball [Corp. v.
United States], 729 F.2d at 1436, 221 USPQ at 294.
Deliberately canceling or amending a claim in an effort
to overcome a reference strongly suggests that the
applicant admits that the scope of the claim before the
cancellation or amendment is unpatentable, but it is
not dispositive because other evidence in the
prosecution history may indicate the contrary. See
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