concurring in part, dissenting in part.
I concur in the judgment insofar as it remands the case to the district court for *1466redetermination of infringement in terms of the doctrine of equivalents. The jury’s claim construction was the subject of sharply conflicting expert testimony at trial, and there was substantial evidence on which a reasonable jury could have reached its claim construction, which in turn supported its verdicts of infringement. However, applying Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577, 38 USPQ2d 1461 (1996), and construing the claims de novo, I agree with the court that the “Kaufman-type” ion beam source was incorrectly construed. The correct construction of “Kaufman-type” precludes a finding of literal infringement by these two beam sources, and provides a fresh basis for determination of the question of equivalency. Since that was not the basis at trial, I concur in remanding for that purpose.
Since the correct construction of “Kaufman-type” relies heavily on the prosecution history, I agree that guidance to the trial court is warranted. However, I do not agree with the panel majority that a search report, filed in compliance with the duty of disclosure, produces prosecution history estoppel as to the complete and detailed content of all of the references listed in that report. References not cited by and not relied on by the examiner, but filed and explained by the applicant in accordance with Rule 56 and its implementing rules, do not generate prosecution history estoppel. The role of the prosecution history in generating an estoppel is different from its role in construing the claims. Thus I must, respectfully, dissent from the panel majority’s change in the law of prosecution history estoppel.
A. The Patentability Report
Litton filed a Patentability Report listing eighty-two references: forty-two scientific articles and forty United States and foreign patents. Litton also filed a document containing concise explanations of the relevance of each listed reference. The Report is a collection of the major scientific and technical literature on optical film production by ion beam sputtering, and includes not only references on the Kaufman-type ion beam source but also the duoplasmatron, hollow cathode, radio frequency, and most or all other sources of ion beams, as well as the technology of producing laser mirrors. The examiner cited the entire Report, without analysis of its contents, as “admitted prior art.” Indeed, these eighty-two (later enlarged to eighty-three) references span the field of optical films formed by ion beams.
The report was filed in compliance with 37 C.F.R. § 1.56, in accordance with § 1.97(a):
§ 1.97(a) (1985) As a means of complying with the duty of disclosure set forth in § 1.56, applicants are encouraged to file an information disclosure statement____
For each of the eighty-two references Litton provided a statement of the subject matter and its relevance, as required by 37 C.F.R. § 1.98(a)(2):
§ 1.98(a) (1985) Any disclosure statement filed ... shall include ...
(2) a concise explanation of the relevance of each listed item.
Thus for each reference Litton provided a one-sentence summary, of which the following are typical:
The Spenser et al article discloses ion beam-deposited polycrystalline diamond-like films, but does not disclose Applicants’ claimed ion beam sputtering methods.
The Prival et al article discloses ion beam sputtering apparatus and techniques, but does not disclose or suggest Applicants’ claimed ion beam sputtering techniques.
Paper No. 3, pp. 13,15.
In examining the original patent the examiner had cited four patents and two articles. In examining the reissue application the examiner cited the Patentability Report as “admitted prior art” and two references: the Bernard patent and the Laznovsky article. The examiner explained that the admitted prior art showed these laser mirrors broadly, and cited Bernard and Laznovsky for specific *1467aspects of the invention. The entire text of the examiner’s rejection is as follows:
Claims 1 and 3-15 are rejected under U.S.C. § 103 as being unpatentable over the combination of admitted prior art contained in “Patentability Report” filed by applicants on August 30, 1985 and Laznovsky.
The prior art cited by applicants and mentioned in the “Background of the Invention” section of the original patent amply establishes that laser mirrors comprising quarter wave stacks of layers of materials of different refractive indices materials were known prior to the instant invention. Laznovsky teaches, commencing at page 52 thereof, that ion beam sputtering using a rotating substrate may yield uniform films. Moreover, Laznovsky at page 54 teaches that ion beam sputtering of certain oxidic targets results in loss of oxygen, which must be compensated for by addition of oxygen background gas to the atmosphere inside the vacuum chamber. The features recited in instant claims 3 and 8 are also disclosed by Laznovsky.
[The Bernard patent] cited by applicants ... is cited and ... teaches that multiple layer coatings comprising different materials sputtered from different targets may be formed by ion-beam sputtering (Bernard, Col. 1, lines 38-51; col. 4, lines 1-18).
It thus would have been obvious, at the time the invention was made, to fabricate the known multi-layer laser mirror stacks using the apparatus and techniques of Laznovsky (including stoichiometry control of deposited films by oxygen addition to the background gas, substrate rotation, presputter cleaning of the targets by ion bombardment, and target cooling), in view of the clear teachings of Bernard pertaining to the use of multi-targeted ion-beam sputtering apparatus for depositing multilayered films of differing composition. Choice of suitable layer materials of higher and lower refractive index clearly follows from the prior art and does not constitute unobvious modification of the references.
Claims 14-15 are rejected under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103 as obvious over the admitted prior art. As for product-by-process claims 14 and 15, a 35 U.S.C. § 102/35 U.S.C. § 103 rejection is fair and proper in view of [citing cases]____
Paper No. 6, pp. 5-6.
Of the references listed in the Patentability Report only the Bernard patent was cited by the examiner. None of the eighty-one other references was mentioned by the examiner, throughout the lengthy prosecution. The examiner referred to the “admitted prior art” as “establish[ing] that laser mirrors comprising quarter wave stacks ... were known prior to the instant invention.” See supra.
Litton responded by distinguishing its invention from the prior art mirrors and from the teachings in the Laznovsky and Bernard references, and from the “admitted prior art” as follows:
The remaining references that fall within the category that the Examiner has denominated ‘admitted prior art’ are, in Applicants’ opinion, of marginal relevance. Please see Applicants’ Reissue Declaration and Power of Attorney accompanying this amendment for a discussion of the patentable distinctions between the claims on file and the disclosures of these references.
In the referenced Reissue Declaration Litton grouped all of the references listed in the Patentability Report, in general statements of which the following is typical:
Claims 1 and 13 also patentably distinguish over items 1-15, 17-19, 21, 23 and 24, 26-41, and 44, 45, 48 and 49 above, because none of these references discloses an ion-beam sputtering method to make any product, let alone the multiple-layer optical films comprising optical layers having different indices of refraction referred to in claims 1 and 13.
Paper No. 8, p. 17. It is incorrect to hold that by these statements Litton generated prose*1468cution history estoppel as to the complete content of each and every one of the eighty-one uncited references. These broad and non-specific distinctions of groups of uncited references do not eliminate recourse to equivalency as to the entire subject matter of every uncited reference. The examiner is required, by the rules of patent examination, specifically to identify the references on which he is relying and to state the reasons for any rejection. Manual of Patent Exam. Proc. § 707.07(d). That was done as to Bernard and Laznovsky, the references that were “central to the course of the prosecution,” in the words of the panel majority. It is simply incorrect to assign “centrality” and thus estoppel to the eighty-one references on the list, none of which the examiner or Litton identified as grounds of unpatentability.
Over the course of the prosecution Litton made several resubmissions of the Patentability Report and the explanation of relevance. All of the documents that the majority characterizes as Litton’s “repeated references” to the eighty-three items are the filing or refiling of these same documents. Thus, after their initial filing, the Patentability Report and the explanation of relevance were again filed, attached to a declaration of Joel Nathanson, an officer of Litton, accompanied by discussion of the Bernard and Laznovsky references and the issues raised by a third-party protester to the reissue. In a subsequent declaration of Dr. Baumeister he also attached the Patent-ability Report, and specifically argued Bernard and Laznovsky in the context of the state of this art as shown in the Report.
These documents were again filed when the examiner required a new Reissue Oath, wherein Litton again broadly and briefly distinguished the listed references by categories. An example is the following:
Claims 1 and 13 also patentably distinguish over references 54, 64, and 73 because they disclose ion-beam sputtering techniques for depositing multiple-layer films, but not multiple-layer optical films, let alone by an ion-beam sputtering technique that includes the atmosphere-controlling step of claims 1 and 13.
Paper No. 8, p. 8.
Finally, the same documents were sent to the PTO when a complete copy of the Nathanson declaration was submitted in response to the PTO’s investigation of the protester’s accusation of inequitable conduct.1 These are the six “over and over” submissions stressed by the panel majority. It is incorrect to describe these resubmissions of the same documents as “repeated references” that transform into prosecution history estoppel the entire content of every reference on the Patentability Report. Further, Litton did not “acknowledge” that each reference on the Report was of prior art status, as the panel majority states. Litton simply repeated the examiner’s words, in the conventional form of an applicant’s Response:
Remaining for consideration is the Examiner’s rejection of claims 1, 3-10, 12 and 13 under 35 USC § 103 as allegedly unpatentable over the combination of what the Examiner calls the “admitted prior art” contained in the patentability report in view of Laznovsky or over French Patent 2,129,-996 [the Bernard patent] in view of Laznovsky.
Paper No. 10, pages 4-5. This was not an admission that the eighty-one references in addition to Bernard and Laznovsky were grounds of estoppel.
The use of an applicant’s search report to create an estoppel as to references not spe*1469cifieally cited by the examiner and not a basis of rejection, is a major change in the law of prosecution history estoppel. Applicants often submit lengthy lists of references in compliance with Rule 56, lest they be charged with inequitable conduct for whatever they leave out. The filing of a list of references in accordance with Rule 97, and their description under Rule 98(a)(2), does not create an estoppel as to the full technical content of every reference on the list. Estoppel arises from an examiner’s rejection based on a specific reference and an applicant’s position taken to avoid that specific reference. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17,-, 117 S.Ct. 1040, 1049, 137 L.Ed.2d 146, 41 USPQ2d 1865, 1871-72 (1997); Mannesmann Demag Corp. v. Engineered Metal Products Co., 793 F.2d 1279, 1285, 230 USPQ 45, 48 (Fed.Cir.1986). It does not arise from the applicant’s exposition of his invention and its place in the field of technology. Such an exposition may be relevant to claim interpretation; it does not, however, produce prosecution history estoppel as to uncited references.
The mischievous consequence of this new rule is to convert into estoppel the information provided in accordance with the duty of disclosure. The history of Rule 56 shows the many uncertainties and pitfalls surrounding an applicant’s provision of information to the Patent Office. The court today adopts a draconian rule of estoppel flowing from an applicant’s compliance with the disclosure rules, for it is notorious that the applicant will be criticized wherever he draws the line in disclosing references known to him. This new rule can only deter the broad disclosure that has shielded applicants from the “plague” of inequitable conduct charges that the disclosure requirements have spawned. Cf. Notice of Final Rulemaking [Duty of Disclosure], 57 Fed.Reg. 2021, 2022 (1992) (“It is in the best interest of the Office and the public to permit and encourage individuals to cite information to the Office without fear of making an admission against interest.”) This new pitfall in an already uncertain practice diminishes the utility of the patent system, thereby disserving the national interest in innovation, new products, and industrial growth.
B. The Remand Instructions
The panel majority instructs the district court to determine, in implementation of this new basis of prosecution history estoppel, whether the accused Honeywell processes involve a “trivial variation of any of the sources before the examiner,” and particularly whether there is such variation from the teachings of two references selected from the list of eighty-three. The two references are No. 73 in the Patentability Report and a textbook chapter by Harper that was referred to in the Baumeister declaration. The references are selected by the panel majority, with Honeywell’s help. Neither reference was a ground of rejection by the examiner.
Reference No. 73 is a scientific article by G.E. Lane and J.C. Anderson entitled “The Nucleation and Initial Growth of Gold Films Deposited onto Sodium Chloride by Ion-Beam Sputtering,” published in Thin Solid Films in 1975. The panel majority instructs the district court to ascertain whether the differences are “trivial” between the Lane radio frequency ion beam source and the radio frequency ion beam source used by Honeywell. The majority’s position is that if the differences are in fact trivial, then Litton is estopped from asserting equivalency between the Honeywell radio frequency beam and the Litton Kaufman-type beam. (Honeywell does not state that it is practicing the prior art as contained in these references.)
In its statement under Rule 98(a)(2) Litton had described the Lane article as follows:
The Lane et al article discloses the nueleation and initial growth of gold films deposited onto sodium chloride by ion beam sputtering, but does not disclose Applicants’ claimed methods.
Paper No. 3, p. 14. Reference No. 73 is also mentioned in the following sentence, which I quoted supra from the document filed with the Supplemental Reissue Declaration:
*1470Claims 1 and 13 also patentably distinguish over references 54, 64, and 73 because they disclose ion-beam sputtering techniques for depositing multiple-layer films, but not multiple-layer optical films, let alone by an ion-beam sputtering technique that includes the atmosphere-controlling step of claims 1 and 13.
Paper No. 8, p. 8. The examiner never cited or referred to the Lane article. Such general statements by the applicant do not, should not, produce an estoppel as to the entire technical subject matter content of the reference.
The majority similarly instructs the district court concerning a chapter by James M.E. Harper entitled “Ion Beam Deposition” in Thin Film Processes (1978), with respect to the hollow cathode tube as a source of ion beams. This chapter was not among the eighty-three listed references, but was referred to by Dr. Baumeister as a “comprehensive review article” that “neither teaches nor suggests the use of any ion-beam sputtering technique to make any multi-layer optical film.” Paper No. 16, p. 4. That was the extent of the contribution of Harper to the prosecution. The examiner did not mention Harper, either before or after Baumeister’s submission.
The district court had already reviewed and rejected Honeywell’s arguments about prosecution history estoppel. The district court correctly stated that “the file history does not indicate that these other sources were ever the subject of discussion with the examiner—only duoplasmatron ion beam sources [Bernard] and the ion beam source in the specification [Laznovsky] were specifically mentioned by the examiner in making his determination.” Slip op. at 89, 1995 WL 366468, at *45. The district court correctly stated that prosecution history estoppel could be based only on sources “discuss[ed] with the examiner.” This ruling is in accordance with the Court’s holding in Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 117 S.Ct. 1040, 137 L.Ed.2d 146, 41 USPQ2d 1865 (1997), that prosecution history estoppel is based on responses to the examiner’s rejections “in which ‘the applicant, in order to meet objections in the Patent Office, based on references to the prior art, adopted the phrase as a substitute for the broader one’ previously used.” 520 U.S. at ---, 117 S.Ct. at 1049-50, 137 L.Ed.2d 146, 41 USPQ2d at 1872 (emphasis the Court’s). The new rule of the panel majority is a marked departure from this precedent, a departure that is not only contrary to the Court’s holding in Wamer-Jenkinson, but serves no useful purpose.
This new rule seriously erodes the doctrine of equivalents, with the anomalous result that the more fully the patent applicant complies with the duty of disclosure, the greater the range of equivalents he stands to lose to prosecution history estoppel. The inappropriate consequences of this ruling are revealed in today’s result whereby the trial court must base prosecution history estoppel on two references that neither the applicant, the examiner, the protestor, nor the trial judge, considered relevant. From this rule, and its application in this ease, I must dissent.
. The Rules require public notice of every application for reissue, and provide for the filing of protests by interested persons. 37 C.F.R. § 1.292. The protester charged Litton with inequitable conduct on the ground that Litton had included too many references in the Patentability Report, and should have listed only those few that Litton believed were closest to its invention. The PTO investigated the charge, as it is required to do, and exonerated Litton of any wrongdoing. Indeed, while the panel majority holds that Litton by its presentation of this Report and statements of relevance had established prosecution history estoppel as to each listed item, the protester argued that the list and accompanying statements were insufficient to bring any of the listed items before the examiner.