Appeal 2007-1432
Application 09/141,186
Patent 5,549,673
could not reasonably be expected to have described the
insubstantial substitute in question. In those cases the patentee
can overcome the presumption that prosecution history estoppel
bars a finding of equivalence (emphasis added).
***
When the patentee has chosen to narrow a claim, courts may
presume the amended text was composed with awareness of
this rule and that the territory surrendered is not an equivalent
of the territory claimed. In those instances, however, the
patentee still might rebut the presumption that estoppel bars a
claim of equivalence. The patentee must show that at the time
of the amendment one skilled in the art could not reasonably be
expected to have drafted a claim that would have literally
encompassed the alleged equivalent (emphasis added).
The same policy considerations that prevent a patentee from urging
equivalents within what the Supreme Court refers to as “surrendered
territory” should prima facie prohibit the patentee from being able to claim
subject matter within the surrendered territory in reissue. Accordingly, the
“surrendered subject matter” that may not be recaptured through reissue
should be presumed to include subject matter broader than the patent claims
in a manner directly related to (1) limitations added to the claims by
amendment (either by amending an existing claim or canceling a claim and
replacing it with a new claim with that limitation) to overcome a
patentability rejection and (2) limitations argued to overcome a patentability
rejection without amendment of a claim. These presumptions are believed
to place practical and workable burdens on examiners and Appellant.
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