1468. Second, if the reissue claims are broader, the court determines whether the patentee surrendered subject matter and “whether the broader aspects of the reissued claim relate to [the] surrendered subject matter.” Id. at 1468-69; see also id. at 1469-70. To determine whether a patentee surrendered subject matter, we ask “whether an objective observer viewing the prosecution history would conclude that the purpose of the patentee’s amendment or argument was to overcome prior art and secure the patent.” Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1323 (Fed.Cir.2006). If the patentee surrendered by argument, he must clearly and unmistakably argue that his invention does not cover certain subject matter to overcome an examiner’s rejection based on prior art. Medtronic, 465 F.3d at 1376 (<HOLDING>); Hester, 142 F.3d at 1482 (explaining that
holding the government waived its argument on appeal that the defendant did not have standing to challenge a search when it failed to raise the argument to the district court holding that because a valid arbitration clause existed the parties had to arbitrate all disputes when the subject matter of the dispute has a reasonable relationship to the subject matter of the contract holding that a patent attorneys argument did not clearly and unmistakably surrender the subject matter holding that in the attorneys fee proceeding we must accept as true the district courts determination that it lacked subject matter jurisdiction over the case because the plaintiff did not appeal the dismissal recognizing surrender as a contractual act but only with the consent of both parties requiring surrender by the debtor and willing acceptance of title by the creditor