Prosecution History Estoppel

Rewriting dependent patent claim into independent form, coupled with cancellation of original independent claim, constitutes narrowing amendment giving rise to presumptive surrender of subject matter if dependent claim includes limitation not found in cancelled independent claim, or circumscribes limitation found in that claim, and fact that scope of rewritten claim has remained unchanged will not preclude application of prosecution history estoppel.  Thus, the fact that the scope of the rewritten claim has remained unchanged will not preclude the application of Prosecution History Estoppel if, by canceling the original independent claim and rewriting the dependent claims into independent form, the scope of subject matter claimed in the independent claim has been narrowed to secure the patent.  (Honeywell Int’l Inc. v. Hamilton Sundstrand Corp., 71 USPQ2d 1065, CA FC, 6/2/04).

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