Appeal No. 2006-2248
Application No. 10/158,618
extrinsic evidence unavailable to an “objective observer” at the time of the
amendment is not relevant to showing that an “objective observer” could not
reasonably have viewed the subject matter as having been surrendered. Limiting
the nature of the admissible evidence is believed to be consistent with the Federal
Circuit’s decision on remand following Festo II. Festo Corp. v. Shoketsu Kinzoku
Kogyo Kabushiki Co., 344 F.3d 1359, 1367, 68 USPQ2d 1321, 1326 (Fed. Cir.
2003), cert. denied, 541 U.S. 988 (2004) (Festo III).
On remand, the Federal Circuit notes (Id. at 1367-70, 68 USPQ2d at 1326-
29):
[W]e reinstate our earlier holding that a patentee’s rebuttal of the
Warner-Jenkinson presumption is restricted to the evidence in the
prosecution history record. Festo [I], 234 F.3d at 586 & n.6; see also
Pioneer Magnetics, 330 F.3d at 1356 (stating that only the prosecution
history record may be considered in determining whether a patentee
has overcome the Warner-Jenkinson presumption, so as not to
undermine the public notice function served by that record). If the
patentee successfully establishes that the amendment was not for a
reason of patentability, then prosecution history estoppel does not
apply.
***
. . . By its very nature, objective unforeseeability depends on
underlying factual issues relating to, for example, the state of the art
and the understanding of a hypothetical person of ordinary skill in the
art at the time of the amendment. Therefore, in determining whether
an alleged equivalent would have been unforeseeable, a district court
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