Appeal 2007-1432
Application 09/141,186
Patent 5,549,673
response to a rejection, he may not argue that the surrendered
territory comprised unforeseen subject matter that should be
deemed equivalent to the literal claims of the issued patent. On
the contrary, “[b]y the amendment [the patentee] recognized
and emphasized the difference between the two phrases[,] ...
and [t]he difference which [the patentee] thus disclaimed must
be regarded as material.” Exhibit Supply Co. v. Ace Patents
Corp., 315 U.S. 126, 136-37, 62 S. Ct. 513, 518-19 [52 USPQ
275, 279-80] (1942).
Festo II goes on to comment, 535 U.S. at 737-41, 122 S. Ct. at 1840-
42, 62 USPQ2d at 1712-14:
[Prosecution history estoppel’s] reach requires an examination
of the subject matter surrendered by the narrowing amendment.
[A] complete bar [would avoid] this inquiry by establishing a
per se rule; but that approach is inconsistent with the purpose of
applying the estoppel in the first place-to hold the inventor to
the representations made during the application process and to
the inferences that may reasonably be drawn from the
amendment (emphasis added).
***
A patentee’s decision to narrow his claims through amendment
may be presumed to be a general disclaimer of the territory
between the original claim and the amended claim. Exhibit
Supply, 315 U.S., at 136-137, 62 S. Ct. 513 (“By the
amendment [the patentee] recognized and emphasized the
difference between the two phrases and proclaimed his
abandonment of all that is embraced in that difference”). There
are some cases, however, where the amendment cannot
reasonably be viewed as surrendering a particular equivalent.
The equivalent may have been unforeseeable at the time of the
application; the rationale underlying the amendment may bear
no more than a tangential relation to the equivalent in question;
or there may be some other reason suggesting that the patentee
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