Ex Parte Aleles et al - Page 31



             Appeal No. 2006-2248                                                                               
             Application No. 10/158,618                                                                         

                                                     (10)                                                       
                                       Relevance of prosecution history                                         
                   “Surrendered subject matter” is defined in connection with prosecution                       
             history estoppel in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535                       
             U.S. 722, 733-34, 122 S. Ct. 1831, 1838, 62 USPQ2d 1705, 1710-11 (2002) (Festo                     
             II):                                                                                               
                   The doctrine of equivalents allows the patentee to claim those                               
                   insubstantial alterations that were not captured in drafting the original                    
                   patent claim but which could be created through trivial changes.                             
                   When, however, the patentee originally claimed the subject matter                            
                   alleged to infringe but then narrowed the claim in response to a                             
                   rejection, he may not argue that the surrendered territory comprised                         
                   unforeseen subject matter that should be deemed equivalent to the                            
                   literal claims of the issued patent.  On the contrary, “[b]y the                             
                   amendment [the patentee] recognized and emphasized the difference                            
                   between the two phrases[,] ... and [t]he difference which [the patentee]                     
                   thus disclaimed must be regarded as material.”  Exhibit Supply Co. v.                        
                   Ace Patents Corp., 315 U.S. 126, 136-37, 62 S. Ct. 513, 518-19 [52                           
                   USPQ 275, 279-80] (1942).                                                                    
                   Festo II goes on to comment, 535 U.S. at 737-41, 122 S. Ct. at 1840-42, 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                      

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