Appeal 2007-1432
Application 09/141,186
Patent 5,549,673
(11)
Admissible evidence in rebuttal showing
As in the case of surrender when applying the doctrine of equivalents,
a reissue Appellant should have an opportunity to rebut any prima facie case
made by an Examiner.
What evidence may an Appellant rely on to rebut any prima facie case
of recapture?
We hold that the admissible rebuttal evidence generally should be
limited to (1) the prosecution history of the application which matured into
the patent sought to be reissued and (2) showings related to what was known
by a person having ordinary skill in the art at the time an amendment was
made. Nevertheless, we will not attempt to divine, at this time, all evidence
that might be relevant. As with other issues that come before the USPTO,
such as obviousness and enablement, the evidence to be presented will vary
on a case-by-case basis, as will the analysis of that evidence.
“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 Appellant 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”
- 31 -
Page: Previous 24 25 26 27 28 29 30 31 32 33 34 35 36 37 38 Next
Last modified: September 9, 2013