Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[gee]

An issued claim has elements A, B, and C.  During prosecution of the patent application, the applicant argued that the prior art does not teach A, B, C, and D.  The claim was not amended to include element D.  The examiner's reason for allowance was the the prior art does not teach A, B, and C.   Does the applicant's inclusion of element D in the argument effectively add the limitation of element D to the claim even though the claim was never amended to include element D and the examiner did not state that element D was needed to overcome the prior art in his reason for allowance?  

Can the file history effectively add elements to a claim not appearing in the issued claim or is the file history just used to more narrowly interpret the elements of the claim that actually appear in the claim?

[clarklawyer]

An issued claim has elements A, B, and C.  During prosecution of the patent application, the applicant argued that the prior art does not teach A, B, C, and D.  The claim was not amended to include element D.  The examiner's reason for allowance was the the prior art does not teach A, B, and C.   Does the applicant's inclusion of element D in the argument effectively add the limitation of element D to the claim even though the claim was never amended to include element D and the examiner did not state that element D was needed to overcome the prior art in his reason for allowance?  

It might depend on why the issue of D came up.   An off the cuff remark in response to an examiner mentioning D would seem to me to be of little import.  It does not seem logical to me that element D would get read into the claim in this way.

On the other hand, if the words of the claim raised an issue of whether or not "D" was implicitly included, the discussion concerning D might be relevant and might be used to resolve the question.

One thing that I've had senior practioners reinforce for me recently is that "chatty" practitioners produce prosecution files full of litigation issues.

"A closed mouth gathers no foot."

[gee]

As a follow-up, let's assume that elements A,B,C, and D were all well defined and differentiated in the specification and there was no implicit inclusion of element D from the wording of the claim.  

[JimIvey]

No, D isn't in the claim implicitly or otherwise.  

On the flipside of Festo, the Fed Cir has been very reluctant to import limitations from the spec or file history into the claims -- the underlying theory across that and Festo is that a claim covers what it says it covers, no more, no less.

While it's probably unwise to argue limitations that aren't in the claims, I'd say that this was harmless error in this case (especially since the examiner gave reasons for allowance).  

However, if D could reasonably be argued to be an implicit quality of A, B, or C, that might lay the groundwork for an interpretation of A, B, or C as necessarily including D.  However, that's not in the fact pattern that you gave, so no go.  D is out, IMHO.

Regards.

[gee]

Thanks for the responses.