Appeal 2006-3235
Reexamination Control No. 90/006,696
1 amendment to his patent and a new claim or claims
2 thereto, in order to distinguish the invention as claimed
3 from the prior art cited under the provisions of section 301
4 of this title, or in response to a decision adverse to the
5 patentability of a claim of a patent. No proposed amended
6 or new claim enlarging the scope of a claim of the patent
7 will be permitted in a reexamination proceeding under this
8 chapter.
9 35 U.S.C. § 305 (1982).
10 Appellant therefore had an opportunity during
11 reexamination in the PTO to amend his claims to correspond
12 with his contribution to the art. The reasons underlying the
13 PTO's interpretation of the claims in reissue proceedings
14 therefore justify using the same approach in reexamination
15 proceedings.
16 Yamamoto, 740 F.2d at 1572, 222 USPQ at 936-37. In this reexamination
17 proceeding, the patent owner had an opportunity to amend the patent claims
18 or propose new claims in response to the rejection given in the First Action
19 but elected not to do so. This opportunity to amend continued for about
20 seven weeks, at which time the ‘857 patent expired.
21 D. Conclusion
22 In accordance with Am. Acad. and Yamamoto, we will give Claim 11
23 its broadest reasonable interpretation consistent with the disclosure of the
24 ‘857 patent.
25
26 ISSUE 2 -- IS THE RELEVANT FIELD OF ENDEAVOR
27 LIMITED TO FAILURE ANALYSIS?
28
29 A. Facts (many of which are also relevant to Issue 3, involving claim
30 interpretation)
31
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