Appeal 2006-1068
Reissue Application 08/425,766
(11)
Admissible evidence in rebuttal showing
As in the case of surrender when applying the doctrine of equivalents, a
reissue Applicant should have an opportunity to rebut any prima facie case made
by an Examiner.
What evidence may an Applicant rely on to rebut any prima facie case of
recapture?
We hold that the admissible rebuttal evidence generally should be limited to
(1) the prosecution history of the application which matured into the patent sought
to be reissued and (2) showings related to what was known by a person having
ordinary skill in the art at the time an amendment was made. Nevertheless, we
cannot attempt to divine, at this time, all evidence that might be relevant. As with
other issues that come before the USPTO, such as obviousness and enablement, the
evidence to be presented will vary on a case-by-case basis, as will the analysis of
that evidence.
An applicant must show that at the time the amendment was made, one
skilled in the art could not reasonably have viewed the subject matter broader than
any narrowing amendment as having been surrendered. The showing required to
be made by applicant is consistent with the public notice function of claims.
Nevertheless, some limited extrinsic evidence may be relevant. However, extrinsic
evidence unavailable to one of ordinary skill in the art at the time of the
amendment is not relevant to showing that one skilled in the art could not
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