Re: How much damage was done to the 336 during re-exams? Did we lose the right to
posted on
Sep 12, 2010 02:07PM
<In Opty's opinion, the 336 changes were not that significant. >
I'm not sure exactly what you are referring to but, in essence, that is my belief. The basis of that belief is as follows:
<Where an amendment narrows the scope of the claims, and that amendment is adopted for a substantial reason related to patentability, the amendment gives rise to a presumption of surrender for all equivalents that reside in the territory between the original claim and the amended claim.>
Since there were two amendments in the claim language, we need to consider what, if anything, was surrendered by each amendment.
1. "Off-chip" was added to clarify external. We no longer can claim infringement if the second clock is on-chip. Would we have accused anyone of infringement if the second clock was on-chip? IMHO, NO and therefore have not surrendered anything related to any prior claim of infringement.
2. "Wherein a clock signal from said off-chip external clock originates from a source other than the oscillator" was added to make it clear that the two clocks are totally independent of each other. We no longer can claim infringement where the signal from said off-chip clock originates from the oscillator. Would we have accused anyone of infringement if the second clock signal orginated from the on-chip oscillator (a dependent second clock)? IMHO, NO and therefore have not surrendered anything related to any prior claim of infringement.
In any case, I hope my lay input does not detract from your effort to hire a pro. Good luck with that.
Opty