dissenting.
The court has taken words out of context, imported a limitation from the written description into the claims, and crafted a surprising result. The court’s biggest mistake is its failure to read SRAM’s December 6, 1996 amendment with care. The court hints that the December 6,1996 amendment was a response to an occasion where “[t]he patent examiner rejected most of the claims of the application for indefiniteness and several for anticipation.” Ante, at 400. The flaw here, however, is that most is not all; the only reason SRAM amended “support member” was to provide an antecedent basis — not because the term was rejected because of a prior art reference or any other substantive reason. The same is true for SRAM’s amendment of figures 3, 4, 5 and 6, which were amended to provide additional clarity, not to overcome a prior art or obviousness type rejection.
SRAM amended figures 3, 4, 5 and 6, which depict two embodiments of the gear shifter, by removing the arrows that indicated that the “spring retaining member” rotates. The changes, as cited by the court, “to correct a description of how the shift actuating system operates” and thereby “to correct an incorrect description of the operation of the device,” ante, at 400, were not in reference to the claim, but only to the drawings of the two embodiments. The court has simply taken a circuitous route, by using an embodiment’s prosecution history, to force an embodiment to limit a claim: the meaning of “support member” by way of the amendment pertaining to the “spring retaining member.”
The court also points to the December 6, 1996, amendment’s explanation that “any passage describing the rotation of mandrel 20 or spring-retaining member 40 is incorrect.” The court presumes that this disclaimer was written to the invention as a whole; however, this notion is clearly wrong. The changes to the specification were restricted to col. 5, 1. 21 through col. 6, 1. 3, the section of the specification referring to figures 5 and 6. Thus, this disclaimer only applied to the embodiments described in one discrete section of the patent.
There also is evidence in the written description that SRAM understood that the support member could rotate. It states, “By thus preventing the lifting of the second end 114 of the spring when the spring retaining member 40 is rotated in either direction with respect to the wall 56, a force applied by the detent 110 as it moves in and out of the notches 50, 52 and 54 may be more precisely controlled.” *403Patent ’000, col. 6, ll. 44-49. Thus, while the support member shown in figures 3, 4, 5 and 6 does not rotate, there is evidence in the specification that the support member may rotate and the presence of a third embodiment, albeit of the spring, which shows a rotating support member. See Bell Atl. Network Servs. v. Covad Communications Group, Inc., 262 F.3d 1258, 1270 (Fed.Cir.2001) (“the meaning of a claim term [is] not limited by its specific usage in the written description of a preferred embodiment”); N. Telecom Ltd. v. Samsung Elecs. Co., 215 F.3d 1281, 1291 (Fed.Cir.2000) (“the ‘[v]aried use of a disputed term in the written description demonstrates the breadth of the term rather than providing a limited definition’ ” (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996) (looking to the words of the claims in order to define the scope of an invention))). The court rejects this evidence, implicitly holding that the description of an invention made in the context of an embodiment that encompasses anything less than the entire invention is meaningless. I could find no support for this proposition and the court cites none.
Even the trial court warned of the need to read the amendment closely. SRAM Corp. v. AD-II Eng’g, Inc., 155 F.Supp.2d 826, 834 (N.D.Ill.2001). After acknowledging “[a]t first glance” that AD-II’s “argument is appealing in its simplicity,” the trial court stated that “[c]loser examination reveals certain flaws with such a simplistic view.” Id. The facts have not changed; AD-II still asks this court to “either ignore the third preferred embodiment or construe the patent as not reading upon it.” Id. The law also has not changed; an interpretation that defines the invention in a manner that excludes an embodiment is rarely, if ever, correct and requires highly persuasive evidentiary support not found in this case. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed.Cir.1996). It appears that the court has fallen prey to AD-II’s not so subtle attempt to conflate the PTO’s substantive bases for rejection with the more routine amendments. This court, like the court did below, should have found “no evidence in the prosecution history that the applicant disclaimed a rotatable support member because all references in the amendment to 'stationary’ were made with specific respect to the description of the first two preferred embodiments only, in which the support member is stationary.” SRAM Corp. v. AD-II Eng’g, Inc., 252 F.Supp.2d 712, 716 (N.D.Ill.2003) (referring to that court’s earlier decision in SRAM Corp., 155 F.Supp.2d at 833-34).