claim construction[whether divisional's filewrapper can influence parent patent]

[polar_liu]

If the parent  patent A claim a method, and the divisional patent B claim a device.
In the prosecution,A was issued without considered any prior art under 102 or 103, B was allowned after considering some prior art under 102 and 103.
And they have some identical limitation.
My questin is that if the filewrapper of B have  influence to A in the claim constructin?
and what the rationale of case law?

[DogDayPM 9er9er9er]

I don't have time to find caselaw, but the impression I've always had is that the answer is at least conditionally yes.  This is because the specifications and terms came from one original application.

So if in B a claim term like "widgiedigit" was argued by the applicant to always mean "a generally linear articulated structure capable of bending at least 45 degrees at two locations along its length", then the public should be able to rely on this absolutist statement for the definition of "widgiedigit" in the claims of B and A.

But in freedom to operate practice you seldom find absolutist statements hanging like ripe cherries low on a branch, just waiting for you to pluck.

Contrast instead where the specification for A and B describes multiple embodiments of the invention, and where "widgiedigit" has slightly different uses or meanings depending on differing embodiments of the invention.  Then, if in A the claim containing "widgiedigit" was generally directed at embodiment-1, but in B the claim is directed more to embodiment-2, the patentee at least has wiggle room to argue that the construction of "widgiedigit" in A is not limited to that definition given during prosecution of B.

As always, corrections, amendments and catcalls from the Patentnut Gallery are welcome.

[bleedingpen]

I don't have time to find caselaw, but the impression I've always had is that the answer is at least conditionally yes.  This is because the specifications and terms came from one original application.

So if in B a claim term like "widgiedigit" was argued by the applicant to always mean "a generally linear articulated structure capable of bending at least 45 degrees at two locations along its length", then the public should be able to rely on this absolutist statement for the definition of "widgiedigit" in the claims of B and A.

But in freedom to operate practice you seldom find absolutist statements hanging like ripe cherries low on a branch, just waiting for you to pluck.

Contrast instead where the specification for A and B describes multiple embodiments of the invention, and where "widgiedigit" has slightly different uses or meanings depending on differing embodiments of the invention.  Then, if in A the claim containing "widgiedigit" was generally directed at embodiment-1, but in B the claim is directed more to embodiment-2, the patentee at least has wiggle room to argue that the construction of "widgiedigit" in A is not limited to that definition given during prosecution of B.

As always, corrections, amendments and catcalls from the Patentnut Gallery are welcome.

This is my understanding as well.  Also keep in mind that IC charges can carry over from a divisional to a parent application. 

[polar_liu]

Thanks alot for the wonderful reply~
I need to find some similarly caselaw reference to surpport the argument that using the divisional's filewrapper to restrict the scope of parent patent's claim scope ,but I'm not familiar of caselaw searching,whould you like give me some advice(or methord) on some good way to search case law free?

[klaviernista]

Polar:

If you are in the U.S., most law libraries offer free access to the public and have the CAFC reporters and decent indexes.  You could also ask the librarians for assistance.

As a start, you might want to consider Laitram Corp. v. Morehouse Industries, Inc., 143 F.3d 1456, 1459 n.2 (Fed. Cir. 1998) (using the prosecution history of a parent application to construe the claims of two family-related reissue patents), and follow on cases.

Best,

Klav

[khazzah]

You could try Google Scholar, which now includes cases.

If you're an attorney, find out if your state bar offers access to a free database such as Casemaker.