Appeal 2006-1068
Reissue Application 08/425,766
42, 62 USPQ2d at 1712-14:
[Prosecution history estoppel’s] reach requires an examination of the
subject matter surrendered by the narrowing amendment. [A]
complete bar [would avoid] this inquiry by establishing a per se rule;
but that approach is inconsistent with the purpose of applying the
estoppel in the first place-to hold the inventor to the representations
made during the application process and to the inferences that may
reasonably be drawn from the amendment [emphasis added].
***
A patentee’s decision to narrow his claims through amendment may
be presumed to be a general disclaimer of the territory between the
original claim and the amended claim. Exhibit Supply, 315 U.S., at
136-137, 62 S. Ct. 513 (“By the amendment [the patentee] recognized
and emphasized the difference between the two phrases and
proclaimed his abandonment of all that is embraced in that
difference”). There are some cases, however, where the amendment
cannot reasonably be viewed as surrendering a particular equivalent.
The equivalent may have been unforeseeable at the time of the
application; the rationale underlying the amendment may bear no
more than a tangential relation to the equivalent in question; or there
may be some other reason suggesting that the patentee could not
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