## United States Court of Appeals for the Federal Circuit

04-1013

ALFRED SALAZAR, Plaintiff-Appellant,

v.
PROCTER & GAMBLE COMPANY, Defendant-Appellee.

Henry C. Su , Fenwick & West LLP, of Mountai n View, California, argued for plaintiff-appellant. With him on the brief were Brenda M. Simon and Kent Kemeny

. Charles J. Faruki , Faruki Ireland & Cox P.L.L., of Dayton, Ohio, argued for defendant-appellee. With him on the brief was Thomas R. Kraemer

. Appealed from: United States District C ourt for the Northern District of Oklahoma Senior Judge H. Dale Cook

## United States Court of Appeals for the Federal Circuit

04-1013 ALFRED SALAZAR, Plaintiff-Appellant,

v. PROCTER & GAMBLE COMPANY, Defendant-Appellee.

___________________________ DECIDED: July 8, 2005

___________________________ Before RADER, BRYSON, and GAJARSA, Circuit Judges

. Opinion for the court filed by Circuit Judge RADER. Dissenting opinion filed by Circuit Judge BRYSON. RADER, Circuit Judge

. Alfred Salazar owns U.S. Patent No. 5,535,474 (’474 patent) for a toothbrush having polishing rods that clean and polish the t eeth and stimulator r ods that stimulate the gums during brushing. ’474 pat ent, Abstract. Salazar, acting pro se , sued Proctor & Gamble Co. (Proctor & Gamble) for infringem ent of the ’474 patent. Proctor & Gamble moved for summary judgment because its t oothbrushes do not include the “elastic” feature of claim 1, the only independent clai m of the ’474 patent. On September 8, 2003, the district court iss ued an order construing the “ela stic” limitation and granting summary judgment to Proctor & Gamble becaus e its products do not in fringe literally or under the doctrine of equivalents. Salazar v. Procter & Gamble Co. , No. 02-CV-590-C (N.D. Okla. Sept. 8, 2003) ( Order ). Because the district court erred in using the patentexaminer’s Reasons of Allowance to excl ude nylon from the scope of the claim term “elastic,” this court vacates the grant of summary judgment and remands. I Mr. Salazar submitted U.S. Patent App lication No. 409,149 (’149 application) on March 23, 1995, which eventually matured into the ’474 patent. The ’474 patent claims a toothbrush with, inter alia , elastic stimulator rods and elas tic polishing rods that extend above the bristles of the brush. ’474 patent, col. 5, l. 30 – col. 6, l. 23. The ’149 application initially contained an independent cl aim 1 and five dependent claims. Claim 2 of the ’149 application depended fr om claim 1; and claim 3 from claim 2. The examiner rejected claim 1 as obvious over U.S. Pa tent No. 3,072,944 (issued Jan. 15, 1963) to Clayton (Clayton) in light of U.S. Patent No. 3,103,679 (issued Sept. 17, 1963) to Clemens (Clemens). The examiner object ed to claims 2 and 3 as allowable subject matter dependent upon a rejected base claim. The applicant responded by canceling claims 1-3 and introducing a new claim 7 based on the allowable subject matter of claim 3. The examiner allowed claim 7 without rejection, 1 which issued as claim 1 of the ’474 paten t. In the Notice of Allowance, the examiner made the following remarks in t he Examiner’s Statem ent of Reasons for Allowance: Claim 7 now incorporates previously held allowable subjec t 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 fl exible, but are not considered to be “elastic” as recited by the claim.

1 Although claim 7 was not rejected, the examiner made amendments to claim 7 not pertinent to this appeal.

04-1013 2The applicant did not respond to these remarks by the examiner. The ’474 patent issued with claim 7 renumbered as claim 1. Mr. Salazar sued Procter & Gamble alleging infringement of certain claims of the ’474 patent. Procter & Gamble filed a moti on for summary judgment of no infringement either literally or under the doctrine of equivalents. Proc tor & Gamble contended that the stimulator and polishing rods in its products are not “elastic” as required by claim 1. The district court construed the term “elastic” and granted Procter & Gamble’s motion for summary judgment. Order at 5 & 7. Specifically, the district court construed the term “elastic” as “any material other than nylon, capable of returning to an initial state or form after deformation.” Order at 5 (internal quotation and citation omitted). The district court granted summary j udgment of no infri ngement because Mr. Salazar did not present sufficient evidence to ra ise an issue of fact about the elasticity of the stimulator and polishing rods in the accused products. Id. at 7. Thus, the district court concluded that the accused products did not fall within the court’s interpretation of the claim term “elastic.” Id. The district court also found that the doctrine of prosecution history estoppel barred Mr. Salazar from assert ing infringement of the “elastic” limitation under the doctrine of equivalents. Id. at 6. Mr. Salazar appeals. II. A determination of infri ngement requires a proper interpretation of the scope and meaning of the claim followed by a comparis on of the accused prod uct to that claim
scope. Omega Eng’g, Inc. v. Raytek Corp. , 334 F.3d 1314, 1320 (Fed. Cir. 2003); Carroll Touch, Inc. v. Electro Mech. Sys., Inc. , 15 F.3d 1573, 1576 (Fed. Cir. 1993). In the context of a grant of summary judgment of no infringement, this court reviews the

04-1013 3entire infringement inqui ry without deference. Omega Eng’g , 334 F.3d at 1320. “Summary judgment is theref ore appropriate when there is no genuine issue of material fact or when, drawing all factual inferenc es in favor of the nonmoving party, no ‘reasonable jury could return a verdict for the nonmoving party.’” Id. (citing Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248 (1986)). In construing claims, “[t]his court . . . considers the prosecution history to determine whether the applicant clearly and unambiguously disclaimed or disavowed any interpretation during prosecution in order to obtain claim allowance.” 3M Innovative Props. Co. v. Avery Dennison Corp. , 350 F.3d 1365, 1371 (Fed. Cir. 2003) (internal quotations and alterations omitted); accord Omega Eng’g , 334 F.3d at 1324; Middleton, Inc. v. Minn. Mining & Mfg. Co. , 311 F.3d 1384, 1388 (Fed. Cir. 2002); Standard Oil Co. v. Am. Cyanamid Co. , 774 F.2d 448, 452 (Fed. Cir. 1985). The doctrine of prosecution history est oppel serves to limit the doctrine of equivalents when the applicant makes a narrowing amendment for purposes of patentability, or clearly and unmistakably surrenders subject matter by arguments made to the examiner. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. , 535 U.S. 722, 736 (2002) (narrowi ng amendment for purposes of patentability); Eagle Comtronics, Inc. v. Arrow Communication Labs., Inc. , 305 F.3d 1303, 1316 (Fed. Cir. 2002) (argument-based estoppel); Elaky Mfg. Co. v. Ebco Mfg. Co. , 192 F.3d 973, 979 (Fed. Cir. 1999) (argument-based estoppel). The first and only time the examiner discu ssed the “elastic” limitation was in the Examiner’s Statement of Reasons for Allow ance. The examiner did not at any time reject a claim of the ’149 application containi ng the “elastic” limitat ion as anticipated or

04-1013 4obvious in view of the prior art. 2 Other than the remarks in the Examiner’s Statement of Reasons for Allowance, the prosecution hi story does not contain any discussion of the “elastic” limitation by either the examiner or the applicant. Nonetheless, the district court excluded nylon from the scope of “elastic.” Order at 5. Specifically, the district court found that the remarks in the Examiner’s Statement of Reas ons for Allowance “amended the claim specifically to exclude nylon from the definition of ‘elastic.’” Id. Thus, this appeal requires this court to decide whether unilateral statements of an examiner in stating reasons for allowance can create a clear and unambiguous disavowal of claim scope and give rise to prosecution history estoppel. The regulations in force during the pros ecution of the ’149 application state: If the examiner believes that the reco rd of the prosecution as a whole does not make clear his or her reasons for allowing a claim or claims, the examiner may set forth such r easoning. The reasons shall be incorporated into an office action reje cting other claims of the application or patent under reexam ination or be the subject of a separate communication to the applicant or pat ent owner. The app licant or patent owner may file a stat ement commenting on the reasons for allowance within such time as may be s pecified by the examiner. Failure to file such a statement shall not give rise to any implication that the applicant or patent owner agrees with or acquiesces in the reasoning of the examiner. 37 C.F.R. § 1.109 ( 1996) (emphasis added). 3 These regulations offer the applicant an opportunity to respond to the examiner’s unilateral reasons for allowance. The regulations also state, however , that the applicant does not ac quiesce in those reasons if the applicant declines to respond.

2 Claims of the ’149 application cont aining the “elastic” limitation were rejected by the examiner for reasons not pertinent to this appeal.

3 37 C.F.R. § 1.109 has since been am ended and now appears at 37 C.F.R. § 1.104(e) (2003).

04-1013 5This court has recognized that an Ex aminer’s Statement of Reasons for Allowance “will not necessa rily 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 prosec ution, without more, cannot amount to a “clear and unmistakabl e disavowal” of claim scope. See 3M Innovative Props. , 350 F.3d at 1373-74 (“‘Prosecut ion 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. Procter & Gamble concedes that the law precludes drawing inferences from an applicant’s decision to decline comment on an Examiner’s Statement of Reasons for Allowance, yet argues that Mr. Salazar s hould be bound by “the message he sent to the public” by his silence. Procter & Gamble supports its position with this court’s language that, on its face, appears to support Procter & Gamble. However, a closer inspection of those cases reveals that Procter & Gamble either cite s to dicta or to cases addressing issues different from this case. Procter & Gamble first quotes TorPharm Inc. v. Ranbaxy Pharmaceuticals, Inc. , 336 F.3d 1322, 1330 (Fed. Cir. 2003): Whether the patentee chooses to disput e the examiner’s view of matters is relevant to claim interpretation, for there a court may need to ascertain exactly what subject matter was actually examined and allowed by the PTO. Patent examination would se rve little purpose unless the scope of

04-1013 6the exclusive patent right correlated with the matter allowed by the PTO. Accordingly, in ascertaining the scope of an issued patent, the public is entitled to equate an invent or’s acquiescence to the examiner’s narrow view of patentable subject matter with abandonment of the rest. Such acquiescence may be found where the patentee narrows his or her claims by amendment, or lets stand an examiner’s restrictive interpretation of a claim

. (internal citations omitted) (emphases supplied by Procter & Gamble). TorPharm addresses a different issue from that before this court. In TorPharm , the applicant added limitations to claims to overcome an obvious ness rejection. Later during litigation, the defendant discovered and showed that the added limitation was also in the prior art. The defendant asserted that the pat entee had acquiesced in the obv iousness of its invention by amending its claims. Therefore, acco rding to the defendant, the patentee could not challenge its obviousness cont entions. This court in TorPharm held that the applicant’s “acquiescence” in the obviousness re jection by amending its claims did not preclude the patentee from contesting obvi ousness in litigation. Id. at 1331. Thus, TorPharm does not hold that a patentee’s silenc e in the face of an examiner ’s unilateral statements in a Notice of Allowance amounts to a clear disavowal of claim scope. Procter & Gamble next quotes the following passage from Inverness Medical Switzerland GmbH v. Princeton Biomeditech Corp. , 309 F.3d 1365, 1372 (Fed. Cir. 2002): [E]ven where the ordinary meaning of the claim is clear, it is wellestablished that the prosec ution history limits the interpretation of claim terms so as to exclude any interp retation that was disclaimed during prosecution. A broader definition may be disclaimed, for example, where the examiner adopts a narrow definiti on and the applicant does not object. (internal quotations and citations omitted) . This broad language, however, is merely dicta. Inverness actually rejected the appellee’s ar gument that a statement in the

04-1013 7examiner’s Reasons for Allowance governed the construction of the claim term at issue. Id. at 1373. Moreover, the cited quotations from both TorPharm and Inverness rely on Elkay

. In Elkay , the examiner rejected some claims in the application for obviousness. 192 F.3d at 978. In response, the applicant did not substantially amend the claims, but overcame the rejection by arguing around t he prior art cited by the examiner. Id. At trial, the patentee discounted its ow n prosecution arguments that had overcome the examiner’s obviousness rejection. The pat entee sought to show that those arguments were insignificant and should not provide a basis to narrow the scope of the claims. Id. at 979. This court reject ed the patentee’s argument. In crediting the applicant’s narrowing arguments during prosecution, this court noted that the examiner expressly accepted those arguments in the Statement of Reas ons for Allowance. Id. T h u s , Elkay holds that the Examiner’s St atement of Reasons for Allowance may help show that the applicant’s own arguments during prosecution constitute a clear disavowal of claim
scope. See also Lemelson v. Gen. Mills, Inc. , 968 F.2d 1202, 1207 (Fed. Cir. 1992) (holding that a patentee acquiesci ng in an examiner’s rejection of a broad claim by filing narrower claims cannot later regai n the broader scope previously abandoned); ACCO Brands , 346 F.3d at 1079 (relying on comments made in an Examiner’s Statement for Reasons of Allowance to limit claim scope bec ause “in this case the examiner simply repeated the arguments that t he patentee had presented”). In sum, Procter & Gamble does not pres ent any case law that stands for the proposition that an exami ner’s unilateral statements in a Notice of Allowance constitute a clear and unambiguous disavowal of claim scope. Once again, the applicant has

04-1013 8disavowed nothing. This court refuses to cr eate a rule or presumpt ion that the applicant in this case disavowed claim scope by silence. Procter & Gamble admits that Mr. Sa lazar was not required to answer the examiner’s statement, but ar gues that “it does not follow that the patent examiner’s comments then should be ignored.” Although unila teral statements by an examiner do not give rise to a clear disavowal of clai m scope by an applicant, it does not necessarily follow that such statements are not pertinent to construi ng claim terms. Statements about a claim term made by an examiner during prosecuti on of an application may be evidence of how one of skill in the art understood the term at the time the application was filed. However, as explained above, an app licant’s silence regar ding such statements does not preclude the applicant from taking a position contrary to the examiner’s statements when the claim terms are construed during litigation. The district court relied upon the same rema rks in the Examiner’s Statements for Reasons of Allowance to find that prosecut ion history estoppel bars Mr. Salazar from asserting infringement of the “elastic” el ement under the doctri ne of equivalents. Order at 6-7. Although the claim language was not altered in response to the examiner’s remarks in the Examiner’s Statement for Reas ons of Allowance, the district court found that the examiner’s remarks “amended” t he “elastic” element of the claim. Id. at 7. However, as previously discussed, this court finds that the examiner’s unilateral remarks did not alter the scope of the claim. 4 An examiner’s statement cannot amend a claim.

4 The parties do not dispute that in troducing claim 7 based on the allowable subject matter of dependent claim 3 of t he ’149 application was not a narrowing amendment for purposes of patentab ility and, therefore, does not by itself give rise to prosecution history estoppel. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki

04-1013 9Consequently, the district court clearly erred in finding that claim 1 was “amended.” Moreover, as the regulation and this cour t’s reasoning above discuss, the examiner’s unilateral remarks alone do not affect the scope of the claim, let alone show a surrender of claimed subject matter that cannot be rec aptured under the doctrine of equivalents. Thus, this court reverses the district cour t’s holding that prosec ution history bars Mr. Salazar from asserting infringement of t he “elastic” element under the doctrine of equivalents. The parties only contest whet her the applicant’s silence to the examiner’s remarks in the Examiner’s St atements of Reasons for Allowance amounts to a clear disavowal of claim scope as found by the district court. Because such statement s do not amount to a clear disavowal of claim scope by the applic ant, this court vacates the portion of the district court’s claim cons truction excluding nylon from falling within the scope of the “elastic” element. This court affirms the rema ining 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 cour t leaves for the district court to resolve in the first instance. III This court vacates the district court’s grant of summary judgment of no literal infringement and no infringement under the doctrine of equivalent s. The district court’s claim construction excluding nylon from the scope of the “elastic” element is also vacated. This court affirms t he remaining portion of the district court’s claim construction

Co. , 535 U.S. 722, 736 (2002) (stating that an am endment that is “truly cosmetic” does not give rise to prosecution history estoppel).

04-1013 10of “elastic.” This case is remanded to the di strict court for further proceedings consistent with this opinion. COSTS Each party shall bear its own costs. VACATED-IN-PART, AFFIRM ED-IN-PART, and REMANDED

04-1013 11

## United States Court of Appeals for the Federal Circuit

04-1013 ALFRED SALAZAR, Plaintiff-Appellant,

v. PROCTER & GAMBLE COMPANY, Defendant-Appellee.

BRYSON, Circuit Judge , dissenting. I respectfully dissent. The ’474 patent distinguishes between the stimulator rod and the bristles that are mounted together in recessed sockets in the Salazar toothbrush. It states that the bristles are typically “c omposed of conventional bristle material such as nylon,” while the stimulat or rod “is composed of an elastic material, typically rubber or rubber substitute.” ’474 patent, col. 4, ll. 31- 34. The patent thus suggests that the stimulator rod and the bristles are made of different materials, which contributes to the differences in their functions . In light of the disclosure in the patent, it was unsurprising that the ex aminer understood the Salazar st imulator rods to be made of a substance other than ny lon, and that he based his dist inction of the prior art Clemens patent on that ground. It is true that, in general, an inventor has no affirmative obligation to respond to an examiner’s characterization of a claim. That is, an applicant is not bound by every statement made by an exami ner during the course of the prosecution unless the04-1013 2 applicant corrects the statement on the record . We have held, for example, that an applicant’s silence in response to an examiner ’s characterization of a claim “does not reflect the applicant’s clear and unmistakable ac quiescence to that characterization if the claim is eventually allowed on grounds unrelated to the examiner’s unrebutted characterization.” 3M Innovative Props. Co. v. Avery Dennison Corp. , 350 F.3d 1365, 1373-74 (Fed. Cir. 2003). In this case, howev er, the examiner’s statement related directly to the ground on which the patent was issued. More importantly, the statement is relevant not because it serv es as the basis for a finding of disclaimer by the inventor, but because it indicates how a person of ordinary skill in the art—in this instance, the examiner—would understand the clai m term “elastic” in the context of the patent. When an applicant sits idly by while an examiner explains that he understands particular claim language to have a particular meaning and only r egards the invention as patentable based on that meaning, the applicant should face a heavy burden in later challenging the examiner’s interpretation. That princi ple is what I understand to underlie the court’s statement in Torpharm, Inc. v. Ranbaxy Pharmaceuticals, Inc. , 336 F.3d 1322, 1330 (Fed. Cir. 2003), that “an inv entor’s acquiescence to the examiner’s narrow view of patentable subject matter” may be found where the patentee “lets stand an examiner’s restrictive interpretation of a clai m.” The examiner’s statement in Elkay Manufacturing Co. v. Ebco Manufacturing Co. , 192 F.3d 973, 979 (Fed. Cir. 1999), is to the same effect. There, the unres ponded-to examiner’s statement was relevant because it indicated that the examiner had relied on the patentee’s di stinction of a prior art reference in allowing the claim in suit. In this case, likewise, the examiner made clear his understanding of the meaning of the term “e lastic” as used in the patent; in that04-1013 3 setting, and in light of the central importance of the ex aminer’s understanding of the meaning of the term to his decision to allow the claims, the absence of any indication that the patentee intended the claim term to be broader supports the district court’s conclusion that the “elastic” stimulator r ods should not be construed to include rods made of nylon.