Appeal No. 2005-0841
Application No. 08/230,083
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 USPQ2d 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
USPQ2d 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
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