damage control after unwitting cancelation of claims

[Chas]

Having little experience in patent prosecution, the person handling my case (me) used an opportune moment to cancel some claims so he could substitute claims with fewer holes.  However, he did so without awareness of the implications for prosecution disclaimer or prosecution history estoppel. 

At this stage, the application is under a non-final rejection, and I'm hoping it is yet possible to do some damage control.  Are there steps I can take to minimize or erase the previous claim cancellations?  Two general strategies I've considered are (1) putting back the canceled claims in an amendment, and/or (2) making a statement that the previously canceled claims were not canceled due to the objections of an office action, and that I disagree with the arguments made against those claims by the office action.

[Isaac]

Are there steps I can take to minimize or erase the previous claim cancellations?  Two general strategies I've considered are (1) putting back the canceled claims in an amendment, and/or (2) making a statement that the previously canceled claims were not canceled due to the objections of an office action, and that I disagree with the arguments made against those claims by the office action.

Unless your intention is to prosecute to allowance those claims with holes in them, I don't see any point in putting them back.   If you plan to dispute some of the arguments made against the previous claims, it would be better to do so with some real claims that don't have the holes in them.   I don't believe making disclaimers that are actually moot would help you all that much.

[Examinerguy]

Prosecution history estoppel means little to an examiner unless you stated in your remarks "I agree with your previous rejection and your art read on all of the currently canceled claims". 99.9% of the time an attorney will put in the remarks the concept of "although I've canceled the claims, no admission has been made...yadda yadda".

Keep prosecuting the new claims, although it is very unfair to the examiner (but that is an entirely different discussion) as long as they don't trigger a restriction by original presentation from the examiner.

[comodonejp]

A little more safer way is, I think, to file a continuation with remarks stating that the new claims are different from the parent application. And the claims should be considered independently from the prosecution of the claims of parent application. Any disclaimer or characterization relating to the prior art or claimed invention of the parent application  both expressed and implied is rescinded.
We don't know what kind of statement is sufficient to avoid the prosecution estoppel later until future litigation ends, factoring Mckesson v. Bridges.

[Chas]

Thanks very much for your thoughts.

Charles

[JimIvey]

I'll toss in my two cents late in the game.

I wouldn't count on getting much out of the doctrine of equivalents (DoE).  Since prosecution history estoppel is a limit on the DoE, it amounts to a limitation on the scintilla of extra coverage you might get from the DoE.  It's far, far, far better to get the claims right. 

For me, the only time Festo crosses my mind is when I think the law supports the claim as it is (actually, as filed) but I can see a minor modification would appease the examiner.  If the claim (or at least the element of the claim at issue) isn't clean (i.e., has been amended), Festo already applies and there's not much to save.  However, if the claim is clean (i.e., as filed), I'll press harder when the examiner is wrong but could be appeased by an amendment.

Any other situation, forget Festo.

Regards.

[bleedingpen]

I'll toss in my two cents late in the game.

I wouldn't count on getting much out of the doctrine of equivalents (DoE).  Since prosecution history estoppel is a limit on the DoE, it amounts to a limitation on the scintilla of extra coverage you might get from the DoE.  It's far, far, far better to get the claims right. 

For me, the only time Festo crosses my mind is when I think the law supports the claim as it is (actually, as filed) but I can see a minor modification would appease the examiner.  If the claim (or at least the element of the claim at issue) isn't clean (i.e., has been amended), Festo already applies and there's not much to save.  However, if the claim is clean (i.e., as filed), I'll press harder when the examiner is wrong but could be appeased by an amendment.

Any other situation, forget Festo.

Regards.

We agree on another principle!  There have been only a handful of affirmances of infringement under DOE by the CAFC in recent years.  You just aren't going to win often on DOE.