Appeal 2007-1432
Application 09/141,186
Patent 5,549,673
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
without an intervening action by the examiner). Amending a
claim “by the inclusion of an additional limitation [has] exactly
the same effect as if the claim as originally presented had been
canceled and replaced by a new claim including that
limitation.” In re Byers, 230 F.2d 451, 455, 109 USPQ 53, 55
(CCPA 1956). [Footnote and citations to the CCPA reports
omitted.]
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