Q: If an element (e.g., a rectangular ring) of a claim is further limited (e.g., a rectangular ring formed of copper)
during an examination to overcome 103 rejection, does the prosecution history estoppel apply to the entire element or just to the added limitation? In other words, can DOE still be applied to a "triangular ring formed of copper" of an alleged infrininging product?
A:
Well, this is, of course, a very well litigated question.
Every patent lawyer knows how to answer this, and nobody outside of the patent bar understands what you are asking, so I assume that you are a law student looking for tutoring. I won't do your homework for you, but I'll point you the way: you should study the three seminal US SCt decisions on this subject: Graver Tank; Warner-Jenkinson; and Festo.
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