Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
“It is clear that in determining whether ‘surrender’ of subject matter
has occurred, the proper inquiry is whether an objective observer viewing
the prosecution history would conclude that the purpose of the patentee's
amendment or argument was to overcome prior art and secure the patent.”
Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1323, 80 USPQ2d 1495, 1502
(Fed. Cir. 2006). Thus, we also hold that an Appellants must show that at
the time the amendment was made, an “objective observer” could not
reasonably have viewed the subject matter broader than any narrowing
amendment as having been surrendered (or that an “objective observer”
would view the reissue claims as materially narrowed). The showing
required to be made by Appellants are consistent with the public notice
function of claims. Nevertheless, some limited extrinsic evidence may be
relevant. However, extrinsic evidence unavailable to an “objective
observer” at the time of the amendment is not relevant to showing that an
“objective observer” could not reasonably have viewed the subject matter as
having been surrendered. Limiting the nature of the admissible evidence is
believed to be consistent with the Federal Circuit’s decision on remand
following Festo II. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
Ltd., 344 F.3d 1359, 1367, 68 USPQ2d 1321, 1326 (Fed. Cir. 2003), cert.
denied, 541 U.S. 988 (2004) (Festo III).
On remand, the Federal Circuit notes (Id. at 1367-70, 68 USPQ2d at
1326-29):
[W]e reinstate our earlier holding that a patentee’s rebuttal of
the Warner-Jenkinson presumption is restricted to the evidence
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