Appeal No. 2006-2248
Application No. 10/158,618
(13)
Public Notice
We believe that any recapture analysis must be bottomed principally on a
“public notice” analysis which can occur only after a record becomes “fixed.” In
the case of a patent, the “claims” and the “prosecution history” become fixed at the
time the patent is issued--not during “fluid” patent prosecution where claims and
arguments can change depending on the circumstances, e.g., prior art applied and
amendments to claims. It is from a fixed perspective that the public (not the
patentee) must make an analysis of what the patentee surrendered during
prosecution. Moreover, an applicant (not the public) controls what amendments
and arguments are presented during prosecution. When an amendment or
argument is presented, it is the applicant that should be in the best position to
analyze what subject matter (i.e., territory to use the Supreme Court’s language) is
being surrendered.
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