Appeal No. 2005-2476
Application 08/862,039
surrendered particular subject matter, we look to the prosecution history for
arguments and changes to the claims made in an effort to overcome a prior art
rejection. Id. Deliberately canceling or amending a claim in an effort to overcome
a reference strongly suggests that the applicant admits that the scope of the claim
before the cancellation or amendment is unpatentable, but it is not dispositive
because other evidence in the prosecution history may indicate the contrary. Id.
We note particularly that we must examine the prosecution history as a
whole to determine whether reissue recapture applies. See Wang Lab., Inc. v.
Toshiba Corp., 993 F.2d 858, 867, 26 USPQ2d 1767, 1775 (Fed. Cir. 1993) (“The
prosecution history must be examined as a whole in determining whether estoppel
applies.”), and Hester Indus., Inc. v. Stein, Inc., 142 F.3d 1472, 1482, 46 USPQ2d
1641, 1649 (Fed. Cir. 1998) (“Indeed, the recapture rule is quite similar to
prosecution history estoppel, which prevents the application of the doctrine of
equivalents in a manner contrary to the patent's prosecution history.”) .
The relevant prosecution history here includes not only the parent ‘272
application but also the ‘977 continuation-in-part application as well. See Jonsson
v. Stanley Works, 903 F.2d 812, 818, 14 USPQ2d 1863, 1869 (Fed. Cir. 1990)
(prosecution history of continuation-in-part application from same parent is
relevant).
3
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007