Appeal 2006-1454
Application 09/004,524
Patent 5,483,421
(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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