Appeal No. 2005-2664
Application 09/187,551
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 ‘584
continuation-in-part application but also the parent ‘331 application as well as the
related ‘499 and ‘056 continuation applications of the parent ‘331 application. 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).
We find no indication in either the Examiner’s rejection or Appellants’
arguments that the prosecution history as a whole (including the claims that issued
in U.S. Patent 6,607,790) was examined in determining whether reissue recapture
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