Appeal 2007-1432
Application 09/141,186
Patent 5,549,673
Instruments, L.L.C. v. Vector Distribution Systems, Inc., 347 F.3d 1314,
1325, 68 USPQ2d 1716, 1723-24 (Fed. Cir. 2003), cert. denied, 540 U.S.
1184 (2004), where the Federal Circuit states:
As an initial note, the only asserted independent claim
that is arguably subject to a narrowing amendment during
prosecution is issued claim 1. This claim, filed as claim 11,
essentially incorporated original claim 1 and original dependent
claim 3. Original claim 9 was not amended during prosecution
and issued as independent claim 4 in unamended form. In
response to the first Office Action rejecting claim 1 under
35 U.S.C. § 103(a) and objecting to claim 3 because it
depended from rejected claim 1, the applicants deleted claims 1
and 3 and added new independent claim 11.
Deering's addition of independent claim 11, coupled with
the clear surrender of the broader subject matter of the deleted
original independent claim presumptively bars Deering from
arguing infringement under the doctrine of equivalents. As the
Supreme Court noted, the correct focus is on whether the
amendment surrendered subject matter that was originally
claimed for reasons related to patentability. Festo II, 535 U.S.
at 736, 122 S.Ct. 1831. Here, the patentees clearly disclaimed
the territory between the original claim 1 and new claim 1 as
issued. Id. at 740, 122 S.Ct. [at] 1831. Original claim 1
claimed “a sliding weight movably carried by said beam for
movement along said scale.” In response to the examiner's
rejection under 35 U.S.C. § 103(a), the applicants deleted
original claims 1 and 3 and settled for claims containing the
narrower requirement that a portion of the sliding weight be
disposed substantially in a plane defined by the fulcrums
originally present in claim 3. The territory between the sliding
weight limitation of original claim 1 and the Zero Position
Limitation was thus surrendered by the patentees. See Pioneer
Magnetics, Inc. v. Micro Linear Corp., 330 F.3d 1352, 1357 [66
USPQ2d 1859, 1862] (Fed. Cir. 2003).
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