Appeal 2007-0493
Application 10/289,967
Patent 6,144,380
(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
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