Appeal 2007-0040
Application 10/170,069
Patent 6,073,699
(2)
Surrendered Subject Matter and Added claim 11
With respect to independent reissue claim 4, Appellant points out that
claim 11 was “cancelled for reasons related to form” and not “to overcome
the § 103(a) rejection.” Appellant then argues that the cancellation of
claim 11 was due to the rejection under 35 U.S.C. § 112, the cancellation
cannot be used as a basis to establish surrendered subject matter. We
disagree.
Firstly, an amendment based on a rejection under 35 U.S.C. § 112
may result in the surrender of claimed subject matter. This was specifically
addressed by the Court in Festo II, 535 U.S. at 736-37, 122 S. Ct. at 1840,
62 USPQ2d at 1712-13:
Estoppel arises when an amendment is made to secure the
patent and the amendment narrows the patent's scope. If a § 112
amendment is truly cosmetic, then it would not narrow the
patent's scope or raise an estoppel. On the other hand, if a § 112
amendment is necessary and narrows the patent’s scope-even if
only for the purpose of better description-estoppel may apply.
A patentee who narrows a claim as a condition for obtaining a
patent disavows his claim to the broader subject matter,
whether the amendment was made to avoid the prior art or to
comply with § 112 . We must regard the patentee as having
conceded an inability to claim the broader subject matter or at
least as having abandoned his right to appeal a rejection. In
either case estoppel may apply.
Secondly, the cancellation of claim 11 does not stand alone. It was
preceded by a rejection under § 112; it was accompanied by the addition of
new claims containing the limitation argued by Appellant (see Finding of
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