Appeal No. 2005-0841
Application No. 08/230,083
As an initial note, the only asserted
independent claim that is arguably subject to
a narrowing amendment during prosecution is
issued claim 1. This claim, filed as claim
11, essentially incorporated original claim 1
and original dependent claim 3. Original
claim 9 was not amended during prosecution
and issued as independent claim 4 in
unamended form. In response to the first
Office Action rejecting claim 1 under
35 U.S.C. § 103(a) and objecting to claim 3
because it depended from rejected claim 1,
the applicants deleted claims 1 and 3 and
added new independent claim 11.
Deering's addition of independent claim
11, coupled with the clear surrender of the
broader subject matter of the deleted
original independent claim presumptively bars
Deering from arguing infringement under the
doctrine of equivalents. As the Supreme
Court noted, the correct focus is on whether
the amendment surrendered subject matter that
was originally claimed for reasons related to
patentability. Festo II, 535 U.S. at 736,
122 S.Ct. 1831. Here, the patentees clearly
disclaimed the territory between the original
claim 1 and new claim 1 as issued. Id. at
740, 122 S.Ct. [at] 1831. Original claim 1
claimed "a sliding weight movably carried by
said beam for movement along said scale." In
response to the examiner's rejection under
35 U.S.C. § 103(a), the applicants deleted
original claims 1 and 3 and settled for
claims containing the narrower requirement
that a portion of the sliding weight be
disposed substantially in a plane defined by
the fulcrums originally present in claim 3.
The territory between the sliding weight
limitation of original claim 1 and the Zero
Position Limitation was thus surrendered by
the patentees. See Pioneer Magnetics, Inc.
v. Micro Linear Corp., 330 F.3d 1352, 1357
[66 USPQ2d 1859, 1862] (Fed. Cir. 2003).
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