In Salazar v. Procter & Gamble Company (Fed. Cir.; July 8, 2005), the court held that unilateral statements of an examiner in the reasons for allowance can not give rise to prosecution history estoppel for U.S. Patent No. 5,535,474 (left).
In the Notice of Allowance, the examiner made the following remarks in the Examiner’s Statement of Reasons for Allowance:
Based upon this portion of the file history, the district court construed the term “elastic” as “any material other than nylon, capable of returning to an initial state or form after deformation.” The district court then granted summary judgment of no infringement because Mr. Salazar did not present sufficient evidence to raise an issue of fact about the elasticity of the stimulator and polishing rods in the accused products. It also also found that the doctrine of prosecution history estoppel barred Mr. Salazar from asserting infringement of the "elastic" limitation under the doctrine of equivalents.
Claim 7 now incorporates previously held allowable subject matter . . . .
Although the patent to Clemens appears to have the recited structure, Clemens’
"rods" 22 are made of nylon, which is not considered "elastic". Obviously the
"rods" of Clemens are flexible, but are not considered to be "elastic" as
recited by the claim.
The Federal Circuit vacated district court’s grant of summary judgment of no literal infringement and no infringement under the doctrine of equivalents:
Practitioners will recall that under 37 CFR 1.104(e), "The applicant or patent owner may file a statement commenting on the reasons for allowance within such time as may be specified by the examiner. Failure by the examiner to respond to any statement commenting on reasons for allowance does not give rise to any implication."
This court has recognized that an Examiner’s Statement of Reasons for
Allowance "will not necessarily limit a claim." ACCO Brands, Inc. v. Micro Sec.
Devices, Inc., 346 F.3d 1075, 1079 (Fed. Cir. 2003). Consequently, an
applicant’s silence regarding statements made by the examiner during
prosecution, without more, cannot amount to a "clear and unmistakable disavowal"
of claim scope. See 3M Innovative Props., 350 F.3d at 1373-74 ("‘Prosecution
history . . . cannot be used to limit the scope of a claim unless the applicant
took a position before the PTO.’ Schwing GmbH v. Putzmeister Aktiengesellschaft,
305 F.3d 1318, 1324-25 (Fed. Cir. 2002) (emphasis added). An applicant’s silence
in response to an examiner’s characterization of a claim does not reflect the
applicant’s clear and unmistakable acquiescence to that characterization if the
claim is eventually allowed on grounds unrelated to the examiner’s unrebutted
characterization."). After all, the applicant has disavowed nothing.
* * *
Because such statements do not amount to a clear disavowal of claim scope
by the applicant, this court vacates the portion of the district court’s claim
construction excluding nylon from falling within the scope of the "elastic"
element. This court affirms the remaining portion of the district court’s claim
construction that "elastic" means "capable of returning to an initial state or
form after deformation." Whether the accused products satisfy the "elastic"
limitation in the asserted claims is a factual matter that this court leaves for
the district court to resolve in the first instance.