73 F.3d 1573

NIES, Senior Circuit Judge,
concurring in result.
I concur in the result of the majority opinion.
I do not agree that the adoption of the narrower of two equally plausible interpretations somehow flows from the requirement of section 112 ¶ 2 that the patentee must particularly point out and distinctly claim the subject matter which he regards as his invention. The majority analysis is illogical to me. Narrowness can not be equated with definiteness. Cf. In re Robins, 429 F.2d 452, 458, 57 CCPA 1321, 166 USPQ 552, 556 (1970) (“ ‘Breadth is not indefiniteness.’ In re Gardner, 427 F.2d 786, 57 CCPA 1207, 166 USPQ 138 (1970).”). The majority, in effect, eviscerates the requirement of section 112, ¶ 2 for the patentee to particularly point out and distinctly claim his invention while purporting to rely on it.
In any event this new basis for construing a claim is unnecessary in this case. The claims must be construed to require at least three offset distances (d¡) based on the prosecution history, the other claims, and the prior art. Respecting the meaning of the phrases “varies continuously between” (Claim 14) and “varies between” (Claim 1), AAI concedes that “[tjhere is no question that Claim 14 requires three or more different distances of string splay,” but argues that Claim 1 requires only two. Yet, it is not the word “continuously” which indicates “three or more distances” of splay in Claim 14. The word “continuously,” as the majority holds, merely suggests the arrangement of the various dj along the sides of the racket. Thus, it can only be the phrase “varies ... between” which leads one to conclude that Claim 14 requires at least three distances of splay. Therefore, the word “continuously” need not be read into Claim 1 in order to construe Claim 1 as also requiring at least three distances of splay. Giving the words “varies between” the same interpretation in Claim 1 as in Claim 14, one must conclude that at least three distances are required in both. This interpretation is buttressed by the pat-entee’s statement during prosecution that the claim that became Claim 1 is directed to the preferred embodiment which showed at least three d¡. AAI never withdrew that statement. The prosecution history is not as equivocal as the majority posits.
Finally, it is not at all clear that a claim with only two d¡ in the arrangement of the Prince racket would be patentable over the Lewis reference. See Wilson Sporting Goods Co. v. David Geoffrey & Assoc., 904 F.2d 677, 684, 14 USPQ2d 1942 (Fed.Cir.1990). Prince uses the prior art Lewis “one d” arrangement except for the corners where a shorter d¡ is necessary to fit into the limited space. AAI argues that the Prince racket must infringe because its performance characteristics duplicate those of the invention. By the same token, however, inasmuch as the prior art Lewis racquet would have to have those same performance characteristics, AAI’s argument is unavailing.
. I find no reason for an extended analysis of the doctrine of claim differentiation which is a trivial issue in this case. Claims 1 and 14 are of different scope by reason of the numerical limitations set forth in Claim 14.

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