Ex Parte Steenburg - Page 27



           Appeal 2006-1865                                                                         
           Application 09/660,433                                                                   
           Patent 5,802,641                                                                         

                                                (7)                                                 
                                Clement principles are not per se rules                             
                 Our reading of our appellate reviewing court’s recapture opinions, as a            
           whole, suggests that the Clement steps should not be viewed as per se rules.  For        
           example, we note the following in Clement, 131 F.3d at 1469, 45 USPQ2d at 1164:          
                 Although the recapture rule does not apply in the absence of evidence              
                 that the Appellant’s amendment was “an admission that the scope of                 
                 that claim was not in fact patentable,” Seattle Box Co. v. Industrial              
                 Crating & Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574                      
                 (Fed. Cir. 1984), “the court may draw inferences from changes in                   
                 claim scope when other reliable evidence of the patentee’s intent is               
                 not available,” Ball [Corp. v. United States], 729 F.2d at 1436, 221               
                 USPQ at 294. Deliberately canceling or amending a claim in an effort               
                 to overcome a reference strongly suggests that the Appellant admits                
                 that the scope of the claim before the cancellation or amendment is                
                 unpatentable, but it is not dispositive because other evidence in the              
                 prosecution history may indicate the contrary. See Mentor [Corp. v.                
                 Coloplast, Inc.], 998 F.2d at 995-96, 27 USPQ2d at 1524-25; Ball,                  
                 729 F.2d at 1438, 221 USPQ at 296; Seattle Box Co., 731 F.2d at 826,               
                 221 USPQ at 574 (declining to apply the recapture rule in the absence              
                 of evidence that the Appellant’s “amendment ... was in any sense an                
                 admission that the scope of [the] claim was not patentable”); Haliczer             
                 [v. United States], 356 F.2d at 545, 148 USPQ at 569 (acquiescence in              
                 the rejection and acceptance of a patent whose claims include the                  
                 limitation added by the Appellant to distinguish the claims from the               
                 prior art shows intentional withdrawal of subject matter); In re                   
                 Willingham, 282 F.2d 353, 354, 357, 127 USPQ 211, 213, 215 (CCPA                   
                 1960) (no intent to surrender where the Appellant canceled and                     
                 replaced a claim without an intervening action by the examiner).                   
                 Amending a claim “by the inclusion of an additional limitation [has]               
                 exactly the same effect as if the claim as originally presented had been           

                                               - 27 -                                               

Page:  Previous  20  21  22  23  24  25  26  27  28  29  30  31  32  33  34  Next

Last modified: September 9, 2013