dissenting.
The majority holds that claim 1 is limited only to the ordinary and customary meaning of “[a] method for simultaneously desizing and decolorizing a dyed fabric or dyed garment ... prior to any subsequent oxidation or bleaching,” U.S. Patent No. 5,366,510 (the “ ’510 patent”), col. 6,11. 1-7, and that Wasinger did not disclaim a mul-ti-step process including a subsequent oxidation step, despite the prosecution history to the contrary. Maj. Op., ante at 37-38. Because I think that the applicants’ statements in the prosecution history, coupled with those of the examiner, rise to the level of a clear disclaimer of a process including a subsequent oxidation step, I respectfully dissent.
I
“Generally speaking, we indulge a ‘heavy presumption’ that a claim term carries its ordinary and customary meaning.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.Cir.2002) (quoting Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed.Cir.1999)). However, “a claim term will not carry its ordinary meaning if the intrinsic evidence shows that the patentee ... expressly disclaimed subject matter.” Id. at 1366-67. “The prosecution history limits the interpretation of claim terms so as to exclude any interpretation that was disclaimed during prosecution.” Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed.Cir.), cert. denied, 516 U.S. 987, 116 S.Ct. 515, 133 L.Ed.2d 424 (1995). While I think that the district court went too far in holding that the applicants “disclaimed coverage of [all] multi-step processes while prosecuting the ’510 patent,” Wasinger v. Levi Strauss & Co., No. 01-CA-1056-EP, slip op. at 9 (W.D.Tex. Mar. 31, 2003), I agree with the core of the district court’s holding that there was a disclaimer in the prosecution history of multi-step processes involving subsequent oxidation steps.
A
During the prosecution of the ’510 patent, the examiner first rejected all of the *39applicants’ claims as obvious over U.S. Patent No. 5,199,957 to William M. Pascoe (“Pascoe”), in view of a dictionary and U.S. Patent Nos. 5,171,332, 5,118,322, and 4,231,890. The examiner found the claimed process to be obvious because, as claimed, “the technique may include a subsequent oxidizing agent treatment.” (J.A. at 58.) In response, the applicants argued that, in the claimed process, “harsh oxidizing agents which degraded the fabric were not utilized,” and they distinguished Pas-coe, stating that “Pascoe ... still requires the use of an oxidizing wash.” (J.A. at 62.) The examiner then finalized the rejection, repeating that “the [claimed] technique may include a subsequent oxidizing agent treatment,” and noting that the claims as amended “still permit oxidation to be a part of the process.” (J.A. at 67, 69.) However, the examiner stated:
It appears that there is indeed patentable subject matter in the application since the use of the reducing agents without oxidizing agent follow-up shows some advantages and an advance in the state of the art. If the claims were amended to exclude the possibility of oxidation as part of the process claimed, the claims would be looked upon favorably.
(J.A. at 69 (emphases added).)
In response to the final rejection, the applicants made several amendments that they stated were “as per the Examiner’s suggestion.” (J.A. at 72.) First, the applicants amended claims 1, 13, and 17 by adding the phrase “prior to any subsequent oxidation or bleaching.” (J.A. at 71-72.) The applicants stated that “[t]his limitation specifically excludes the oxidation process from the claims and distinguishes the invention at issue from the cited refer-enees.” (J.A. at 72.) Second, the applicants cancelled claims 9-11. Claim 9 claimed exactly what Wasinger now asserts (and what the majority now holds) that claim 1 encompasses: “The method of claim 1 wherein said fabric or garment is subsequently treated with an oxidizing agent.” (J.A. at 54.)1 The applicants stated that they “cancelled claims 9-11 because they spoke to the specific use of an oxidizing agent which the Examiner determined would read on the prior art.” (J.A. at 72.) The applicants also stated: “The amended claims specifically exclude the use of any oxidizing agents. This limitation puts the claims in condition for allowance.” (J.A. at 73 (emphasis added).) The examiner found the application, as amended, to be allowable.
Based on this history, I would hold that Wasinger disclaimed a process involving a subsequent oxidation step.
B
The majority may suggest that the disclaimer in the prosecution history is ineffective because it is not clear and unambiguous in light of the “prior to” language of claim 1, which, standing alone, seems to contemplate the use of “subsequent oxidation” steps. However, the disclaimer plainly overcomes this language in claim 1. Moreover, it appears that the applicants acted as their own lexicographers in using the “prior to” language. A “claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history.” CCS Fitness, 288 F.3d at 1366; see also, e.g., Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d *401327, 1332 (Fed.Cir.2004). In this case, the examiner clearly required that the claims “exclude the possibility of oxidation as part of the process claimed” and that the process be performed “without oxidizing agent follow-up.” (J.A. at 69.) In response to the examiner, the applicants amended the claims and asserted that the amendments were made “as per the Examiner’s suggestion,” representing that the added claim language was crafted to satisfy the limitations imposed by the examiner. (J.A. at 72.) The applicants thus appear to have acted as their own lexicographers, defining the added language to “exclude the possibility of oxidation as part of the process claimed.” (J.A. at 69.) To hold otherwise is to give apparent sanction to an effort to mislead the Patent and Trademark Office by pretending that added claim language cures an examiner’s rejection when, in fact, it was designed to have the very opposite effect. See Pall Corp. v. PTI Techs. Inc., 259 F.3d 1383, 1393 (Fed.Cir.2001), vacated on other grounds, 535 U.S. 1109, 122 S.Ct. 2324, 153 L.Ed.2d 152 (2002) (“The public notice function of patents requires that a patentee be prevented from expressly stating during prosecution that the claims do not cover a particular device and then later suing for infringement by that same device.”).
II
The majority properly does not address the validity of its broad claim construction. During prosecution, the examiner stated that only “the use of the reducing agents without oxidizing agent follow-up” was non-obvious over Pascoe in view of the other cited references, and he rejected as obvious claims that encompassed subsequent oxidation steps. (J.A. at 69.) While neither I nor the majority expresses a view with respect to whether the examiner was correct, I note that, on remand, the district court must consider whether claim 1 as construed is invalid because it is obvious. See 35 U.S.C. § 103 (2000).
. Claim 10 claimed: "The method of claim 9 wherein said oxidizing agent comprises ozone.” (J.A. at 54-55.) Claim 11 claimed: "The method of claim 9 wherein said oxidizing agent comprises a chlorine bleach.” (J.A. at 55.)