Patent attorneys know that amending the specification can directly impact claim interpretation. The Federal Circuit in Phillips v. AWH Corp. placed the specification alongside claim language as foundational intrinsic evidence for claim construction, recognizing that the specification provides focused context for understanding claim terms as they would be understood by skilled artisans.
Amendments made during prosecution carry particular weight because they represent deliberate choices by the applicant to alter a known baseline. This transition - particularly when moving from a provisional to a non-provisional application - often serves as a natural inflection point where attorneys engage in cleanup, clarification, and refinement.
However, recent Federal Circuit decisions indicate that seemingly routine editorial choices between applications can have profound implications for claim scope, even without rising to the level of formal prosecution disclaimer.
In the case of DDR Holdings, LLC v. Priceline.com LLC, the claim involved methods and systems for generating a composite web page that combines content along with ads from third-party merchants, showcasing the evolution of web technology.
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