Appeal No. 2005-0841
Application No. 08/230,083
Judge Gross, with whom Judge Ruggiero joins, concurring.
We concur in the result reached by the plurality but we
disagree with the plurality's analysis. Specifically, we
disagree with the plurality's presumption that subject matter
broader than the patented claims has been surrendered and that
appellant holds the burden to rebut that presumption.
The plurality states (Opinion, page 27) that "[t]he same
policy considerations that prevent a patentee from urging
equivalents within what the Supreme Court refers to as
'surrendered territory' should prima facie prohibit the patentee
from being able to claim subject matter within the surrendered
territory in reissue." However, in proceedings in which the
doctrine of equivalents is at issue (such as infringement), the
public has only the prosecution history upon which to rely and
has no reason to believe that such reliance is misplaced. On the
other hand, the mere filing of a reissue application puts the
public on notice not to rely upon the prosecution history, as the
overall prosecution history may change. Further, the purpose of
reissue is to allow an applicant to correct errors, which have
been defined as including claiming less than they had a right to
claim (i.e., allowing applicant to broaden claims). Although
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