Appeal 2006-3235
Reexamination Control No. 90/006,696
1 C. Analysis
2 We decline to follow Papst-Motoren19 because, in our view, it
3 misconstrues Yamamoto, which does not preclude application of the
4 “broadest reasonable interpretation” standard to reexamination proceedings
5 involving a patent that expired prior to entry of a Board decision on appeal.
6 Instead, Yamamoto explains that claim interpretation standard applies where
7 the patent owner had “an opportunity” to amend the claims, without
8 indicating how long such an opportunity must last:
9 An applicant's ability to amend his claims to avoid cited
10 prior art distinguishes proceedings before the PTO from
11 proceedings in federal district courts on issued patents. When
12 an application is pending in the PTO, the applicant has the
13 ability to correct errors in claim language and adjust the scope
14 of claim protection as needed. This opportunity is not available
15 in an infringement action in district court. District court[s] may
16 find it necessary to interpret claims to protect only that which
17 constitutes patentable subject matter to do justice between the
18 parties. [In re Prater, 415 F.2d 1393,] 1404, 162 USPQ [541,]
19 550 [(CCPA 1969)].
20 The same policies warranting the PTO's approach to
21 claim interpretation when an original application is involved
22 have been held applicable to reissue proceedings because the
23 reissue provision, 35 U.S.C. § 251, permits amendment of the
24 claims to avoid prior art. In re Reuter, 651 F.2d [751,] 756,
25 210 USPQ [249,] 253-54 [(CCPA 1981)]. The reexamination
26 law, set forth below, gives patent owners the same right:
27 In any reexamination proceeding under this chapter,
28 the patent owner will be permitted to propose any
19 Neither Papst-Motoren nor Bowles constitutes binding precedent.
See Standards of Operating Procedure 2 – Publication of Opinions and
Binding Precedent (Revision 6) (Aug. 10, 2005) (hereinafter “SOP2”)
(available at: http://www.uspto.gov/web/offices/dcom/bpai/ stdproced.html).
11
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