concurring.
I also would affirm the district court’s declaratory judgment that Kopykake’s ink jet printing method does not literally infringe Lucks’ U.S. Patent No. 5,017,394 (the “ ’394 patent”), but I would reach that result through a different route.
As noted in the majority opinion, the resolution of this case turns on claim construction, specifically, on the meaning of the term “screen printing” in step (d) of claim 1. Lucks admits that the term “screen printing” has a well-known meaning in the art' — printing by silk screening. It argues, however, that the broader meaning set forth in the specification— “not only conventional screen printing, but also ... any conventional printing process and any other conventional means and methods of applying the pictorial images to the base shapes” — should govern construction of the claim term. If the claim construction inquiry ended with the specification, I might agree with Lucks’ argument. However, when construing claims, we also review the prosecution history of the patent, if in evidence, because the prosecution history may contain “express representations made by the applicant regarding the scope of the claims.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582, 39 USPQ2d 1573, 1577 (Fed.Cir.1996).
In my view, a careful reading of the prosecution history of the ’394 patent reveals that when the applicant discussed step (d) of claim 1, it used the term “screen printing” in accordance with its common meaning, conventional screen printing, not in accordance with the broad definition set forth in the specification. The applicant distinguished prior art references cited by the examiner by emphasizing that the references, which disclose methods of printing pictorial images on foodstuffs, do not disclose “screen printing.” For example, in response to one *1385rejection, the applicant explained that the claim “specifies the ‘screen printing’ of ‘at least one edible pictorial image[’] onto the edible image,” and the applicant argued that one of the cited references, Abrams, does not disclose its decorating means or disclose that it is “used for ‘screen printing’ ... as claimed by applicants.” With regard to another cited reference, As-chinger, the applicant noted that it discloses a foil transfer process and argued that that process is “clearly not applicant’s claimed ‘screen printing.’” The applicant acknowledged that another reference, Wegner, discloses “screen printing,” but argued that Wegner does not disclose screen casting of the base material, as recited in step (b) of claim 1. With regard to other cited references, Loesch and Ber-sey, the applicant argued that “neither ... makes any disclosure of ‘screen printing’ ... at all.” In making these arguments, the applicant was not using the term “screen printing” in accordance with the broad definition set forth in the specification, but was using the term in accordance with its common meaning. That is, the applicant was not distinguishing the prior art references by asserting that they do not disclose any conventional printing processes, but was arguing that they do not disclose a specific printing process, conventional screen printing.
Another pertinent piece of prosecution history is found in the parent application file, Application No. 06/925,413, filed October 31, 1986, and abandoned in favor of the ’394 patent. The examiner rejected the claim of the parent application that recited the step at issue, asserting, “Abrams teaches printing onto the base shape. To employ screen printing as the printing technique already taught by the art taken as a whole, would be obvious.” In response to that rejection, the applicant stated:
Neither Abrams, Ort or Dwyer discloses or suggests -the successive method steps of first screen printing a very thin, flexible free standing edible image ... and then using screen printing to print onto it an edible pictorial image.... This enables the mass production of decorated edible images using nothing but inexpensive screen printing means, a goal not taught or suggested by any of the applied references.
Lucks admits that the first “screen printing” step discussed in the quoted passage and recited in step (b) of claim 1 — the step that results in the formation of the free standing edible base — entails the use of conventional screen printing. [BIO] By equating the first screen printing step with the screen printing step at issue (the step of screen printing an edible pictorial image onto the base shape, recited in step (d) of claim 1) and by emphasizing that the entire method can be accomplished with “nothing but inexpensive screen printing means,” the applicant was, in effect, defining “screen printing” as used in step (d) of claim 1 as referring to conventional screen printing.3
I agree with the majority that the arguments set forth in the prosecution history do not reveal an express “disclaimer” of methods that use ink jet printing to accomplish step (d) of claim 1. As noted by the majority, the references that were the basis of the prior art rejections do not appear to disclose ink jet printing, and the prosecution history does not contain any discus*1386sion of ink jet printing. Nevertheless, the prosecution history does demonstrate that when the applicant discussed step (d) of claim 1, it used the term “screen printing” in accordance with its common meaning, conventional screen printing. “Claims may not be construed one way in order to obtain their allowance and in a different way against accused infringers,” Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576, 34 USPQ2d 1673, 1677 (Fed.Cir.1995); therefore, the term “screen printing” in step (d) of claim 1 should be construed as literally encompassing conventional screen printing only.
Because Kopykake uses ink jet printing, not conventional screen printing, to apply edible pictorial images to base shapes, I would affirm the district court’s declaratory judgment of noninfringement.
. Lucks argues that because step (b) of claim 1 uses the phrase "screen printing means” whereas step (d) uses the term "screen printing,” the steps need not be construed as having the same meaning. Because my claim construction is based on the statements in the prosecution history that equate those two steps, not on the claim language alone, I need not address that argument.