Appeal 2007-1432
Application 09/141,186
Patent 5,549,673
would view the reissue claims as materially narrowed). The showing
required to be made by Appellant 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
in the prosecution history record. Festo [I], 234 F.3d at 586 &
n.6; see also Pioneer Magnetics, 330 F.3d at 1356 (stating that
only the prosecution history record may be considered in
determining whether a patentee has overcome the Warner-
Jenkinson presumption, so as not to undermine the public
notice function served by that record). If the patentee
successfully establishes that the amendment was not for a
reason of patentability, then prosecution history estoppel does
not apply.
***
. . . By its very nature, objective unforeseeability depends on
underlying factual issues relating to, for example, the state of
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