Your arguments during prosecution should focus on (and mainly quote verbatim) the language of the claims, not the “invention” as a whole. Certainly, do not expressly characterize the “invention” as a whole with narrower terms than those used in the claims.
Background / Facts: The patents here are directed to producing thin sheets of wood veneer from a portion of a log called a “flitch.” The patents address problems caused by the natural taper in flitches, which occurs because trees are thicker at the base and get thinner going up the trunk. When a tapered flitch is mounted on a staylog for cutting, its outer surface is not parallel to the cutting axis of the knife and the first several slices are thus not full length because the knife cuts only the thicker portion of the flitch. The patents attempt to solve this problem by positioning the flitch so that its outer surface is parallel to the axis of the knife. The district court construed the term “flitch” as a portion of a log resulting from the log being cut along its longitudinal axis and “thus having a taper at the butt end of the log.”
Issue(s): Whether the patentee disclaimed untapered flitches during prosecution of the patents-in-suit such that the district court’s construction properly limited a “flitch” to having a “taper” or a “butt end.”
Holding(s): Yes. During prosecution, the patently expressly characterized its invention as removing veneer from a “tapered flitch”: “[The prior art] Weil ’874 is completely silent with regard to the problem solved by applicant’s invention, that is, applicant’s novel method and apparatus for removing veneer from substantially the entire outer veneer-producing surface of the frusto-conical or tapered flitch.” The court thus concluded that “[t]hrough these prosecution statements, Capital sought to overcome anticipation rejections by arguing that its invention, unlike Weil, is directed to tapered flitches. Importantly, Capital made these arguments even with respect to claims that recited only ‘a flitch,’ and thus might not otherwise have been limited to a tapered flitch. This is a clear and unmistakable disclaimer of untapered flitches.”