In re Yamamoto

In re Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984)

Lexis: 740 F.2d 1569

Federal Circuit discusses reasoning behind broadest reasonable construction rule, including reexamination.

Quote from p. 1571-1572 on reasons for the rule and amendment:

Michael Risch wrote:
The PTO broadly interprets claims during examination of a patent application since the applicant may "amend his claims to obtain protection commensurate with his actual contribution to the art." In re Prater, 56 C.C.P.A. 1381, 415 F.2d 1393, 1404-05, 162 U.S.P.Q. (BNA) 541, 550 (1969). This approach serves the public interest by reducing the possibility that claims, finally allowed, will be given broader scope than is justified. Applicants' interests are not impaired since they are not foreclosed from obtaining appropriate coverage for their invention with express claim language. Id. at 1405 n.31, 162 U.S.P.Q. at 550 n.31.

An applicant's ability to amend his claims to avoid cited prior art distinguishes proceedings before the PTO from proceedings in federal district courts on issued patents. When an application is pending in the PTO, the applicant has the ability to correct errors in claim language and adjust the scope of claim protection as needed. This opportunity is not available in an infringement action in district court. District courts may find it necessary to interpret claims to protect only that which constitutes patentable subject matter to do justice between the parties. Id. at 1404, 162 U.S.P.Q. at 550.

The same policies warranting the PTO's approach to claim interpretation when an original application is involved have been held applicable to reissue proceedings because the reissue provision, 35 U.S.C. § 251, permits amendment of the claims to avoid prior art. In re Reuter, 651 F.2d at 756, 210 U.S.P.Q. at 253-54. The reexamination law, set forth below, gives patent owners the same right:

In any reexamination proceeding under this chapter, the patent owner will be permitted to propose any amendment to his patent and a new claim or claims thereto, in order to distinguish the invention as claimed from the prior art cited under the provisions of section 301 of this title, or in response to a decision adverse to the patentability of a claim of a patent. No proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding under this chapter.

35 U.S.C. § 305 (1982).

Appellant therefore had an opportunity during reexamination in the PTO to amend his claims to correspond with his contribution to the art. The reasons underlying the PTO's interpretation of the claims in reissue proceedings therefore justify using the same approach in reexamination proceedings.

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