Appeal No. 2005-0841
Application No. 08/230,083
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 USPQ2d 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 USPQ2d 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).
***
A patentee's decision to narrow his claims through
amendment may be presumed to be a general disclaimer of
the territory between the original claim and the
amended claim. Exhibit Supply, 315 U.S., at 136-137,
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