Appeal No. 2005-0841
Application No. 08/230,083
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.
(11)
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 surrender principles. Hester squarely held that they do.
- 31 -31
Page: Previous 24 25 26 27 28 29 30 31 32 33 34 35 36 37 38 Next
Last modified: November 3, 2007