Statement in prosecution of parent app carries over to child?

[mhgy]

Situation: when responding to a restriction in an app, another attorney argued that the restriction was improper because the embodiments identified by the Ex were obvious variants of each other. Blargh! I then have to continue prosecuting the app and this statement on the record has been a major source of pain. The Ex has not come anywhere close to showing embodiment B in the art, but the previous attorney said that embodiment B was an obvious variant of A (which is much closer to the prior art) to get around the restriction requirement.

We are now filing a CIP (for other reasons) and I am now curious if there is any way to address the issue of the previous admission. My gut feeling is that any admission made during the course of the prosecution of a priority chain carries throughout the chain, i.e. the admission that A and B are obvious variants in the parent app would carry over to the child app, but I can't seem to find anything that definitively states this. Does anyone have any insight on this?

(FWIW, we are filing as a CIP and not a new app, because the client has changed the design of the device slightly and it is close as to whether the parent discloses the new design. Simply filing a new app is likely a no-go due to the similarities of the designs.)

[mhgy]

Pondering it some more, maybe this is not actually an issue.

Proposal: even if A and B were previously admitted to be obvious variants of each other on the record, the embodiments disclosed in the CIP are A' and B'. At no point were A' and B' admitted to be obvious variants, therefore the statement in the parent is inapplicable.

Would individuals here agree with this statement even if the feature that the original restriction was based upon has not changed between the new embodiments? For example, parent app discloses a coat stand having hooks on the top portion (embodiment A) and on the bottom portion (embodiment B). Ex issues a species restriction for A and B. Attorney traverses the restriction by saying that embodiments A and B are obvious variants of each other. Applicant then files a CIP changing the manner in which the top portion and the bottom portion are connected and leaving the various locations of the hooks the same. On one hand, the feature upon which the restriction was based (the location of the hooks) remains the same.. and presumably this was the basis of the applicant's statement that they are obvious variants. On the other hand, the applicant "merely" stated that the embodiments (as a whole?) were obvious variants of each other.

Would individuals here agree with the statement if the applicant specifically stated in the restriction response that "changing the location of the hooks is an obvious variant," rather than generically stating that embodiments A and B were obvious variants of each other?

[klaviernista]

Generally, statements made in the prosection history of a parent application will apply to a child application.

That being said, the federal circuit has held that disclaimers with regard to specific claim language in a parent application did not act to as disclaimers in a corresponding child application, where the relevant terms of the child application's claims differed from those in the parent.

See Saunders Group, Inc. v. Comfortrac, Inc., No. 06-1576 (Fed. Cir. June 27, 2007).  A discussion of that case can be found here: http://www.lexology.com/library/detail.aspx?g=1133ec1d-e765-4e99-b1dd-ffc6c29fed4f

The Saunders case is a bit old now, so you might want to make sure that it is still good law.

[JimIvey]

I've never faced this particular issue, but I wonder if it would do any good to an anti-admission.  "While Applicant has previously asserted that B is an obvious variant of A, Applicant now submits that this assertion was erroneous."  Then, perhaps, proceed to argue non-obviousness as you would in response to a 103 rejection and, if you're lucky, your predecessor didn't lay out a really good KSR argument for obviousness.

If you admit that X is true and then later assert that X is false, does that undo the first statement?  Would it at least give a friendly litigator a chance of overcoming the admission of X?

Regards.

[NJ Patent1]

If the Ex relied on Applicants statement that A, B, and C are "obvious variants" of each other, that particular bell should not be allowed to be unrung.  The attorney may change, but the Applicant (and written description of A and B) doesn't.  In addition to the case Klav cited, there is another "child infection" case of which I am aware and have cited.  Can't recall the cite off-hand.  But Abbott Labs was plaintiff/patentee, the child was infected.  I don't really like JI's approach.  A=B=C to duck a RR (and a fee for a con), then later say nah, Applicant was only joking.  I don't have a case 100% on point (Shepardize Klav's case and find and Shepardize that Abbott case).  But, of the cuff, as an "unfriendly" litigator, I'd feel comfortable arguing estoppel.  Your Honor, how many sides of his mouth does Applicant want to speak from?  Should the public not be allowed to rely on Applicant's point-blank admission.  All that said, depending on facts, you might catch a "friendly" CAFC panel, depending on how patentably distinct A and A' and B and B' are.  In my view, some panels are (too) inclined to not find estoppel.   

[JimIvey]

I don't really like JI's approach.  A=B=C to duck a RR (and a fee for a con), then later say nah, Applicant was only joking. 

Perhaps I should have been a little more clear.  I was assuming that the restriction was not successfully avoided, i.e., that the PTO didn't buy the argument that B was an obvious variation of A.  If restriction was successfully avoided, the PTO would have, in effect, ratified the obviousness analysis and, yes, there should be estoppel.

So, if prior counsel writes something stupid that doesn't seem to have had any effect on prosecution, would it help at all to try to undo that?  If the public can rely on statements favorable to the public made on the record, why can't we assume the public has read the whole record, including the Applicant contradicting itself?

Let me turn that around a bit:  would it hurt to try to undo the stupid statement?

Regards.

[NJ Patent1]

Jim:  Would it hurt to try?  Trying never hurts.  Unless of course you unwittingly dig yourself deeper doing so.  If the Office doesn't buy Applicant's obvious variants assertion in response to the RR (or E-of-S) in the parent ?  I suppose that is a hypothetical possibility.  But I'm hard pressed to see that happening in the life sciences, especially if it is an E-of-S.  I think we would both agree that "estoppel" applies to applicants, not to the Office.  Assume the Office didn't buy the assertion of obvious variant in the parent.  During prosecution of the follow-on, what's to stop the Ex, perhaps armed with new PA, from reversing field and alleging A is indeed an obvious variant of B (or C), and tossing-in "Applicant says such is true anyway"?  If there were no new PA, I guess I might try to come back with the Office's own argument as to why A, B, and C not obvious in view of one another.  But darn it, there is that statement from Applicant who knows her invention better than does the Office or the public.  The "playing field" is not level.  Nor IMO should it be in this situation.

Now I digress into the various "flavors" of estoppel as I understand them.  Amendment based to overcome PA?  Lock-down.  Argument based?  IMO not so lock-down (CAFC floors me sometimes here).  Applicant's unambiguous characterization of their own invention (i.e. A=B=C)?  Probably somewhere in middle, but closer to lock down.  A plethora of fact sensitive case law here. 

To digress further; in a suit asserting the parent patent having that equivalence statement in its PH against my client who obviously infringes if the element is A, I'd have few qualms arguing invalid-as-obvious (or anticipated) if I found PA disclosing B or C (other elements given) relying, in part, on Applicant's own words. 

[klaviernista]

I don't really like JI's approach.  A=B=C to duck a RR (and a fee for a con), then later say nah, Applicant was only joking. 

Perhaps I should have been a little more clear.  I was assuming that the restriction was not successfully avoided, i.e., that the PTO didn't buy the argument that B was an obvious variation of A.  If restriction was successfully avoided, the PTO would have, in effect, ratified the obviousness analysis and, yes, there should be estoppel.

I understand what you are saying and the point you are trying to make.  Just wanted to interject that it is highly unlikely that the examiner will question an Applicant admission that B is an obvious variant of A.  Unless the Examiner fully expects to examine the divisional application that would be filed on A or B (which is unlikely and in any event would occur many months or years down the road), the examiner gains no advantage from questioning the admission.  On the other hand, the examiner can rely on the Applicant admission when examining the case and simply assert that the claims drawn to A (or B) are anticipated/obvious in view of prior art, and the claims drawn to B (or A, as it were) are rejected based on the same cited art + the Applicant admission. 

[mhgy]

I don't really like JI's approach.  A=B=C to duck a RR (and a fee for a con), then later say nah, Applicant was only joking. 

Perhaps I should have been a little more clear.  I was assuming that the restriction was not successfully avoided, i.e., that the PTO didn't buy the argument that B was an obvious variation of A.  If restriction was successfully avoided, the PTO would have, in effect, ratified the obviousness analysis and, yes, there should be estoppel.

I understand what you are saying and the point you are trying to make.  Just wanted to interject that it is highly unlikely that the examiner will question an Applicant admission that B is an obvious variant of A.  Unless the Examiner fully expects to examine the divisional application that would be filed on A or B (which is unlikely and in any event would occur many months or years down the road), the examiner gains no advantage from questioning the admission.  On the other hand, the examiner can rely on the Applicant admission when examining the case and simply assert that the claims drawn to A (or B) are anticipated/obvious in view of prior art, and the claims drawn to B (or A, as it were) are rejected based on the same cited art + the Applicant admission.

Yes, correct. The Examiner gleefully withdrew the restriction in response to the admission. Rejects claims to embodiment A in light of prior art and rejects claims to embodiment B without any additional art because A is anticipated/obvious and applicant already said B was obvious in light of A... even though the art is not actually like B.

Like I said, it has been painful.

[JimIvey]

I understand what you are saying and the point you are trying to make.  Just wanted to interject that it is highly unlikely that the examiner will question an Applicant admission that B is an obvious variant of A. 

I see.  I've never challenged or even have seen a challenge based on admitted obviousness.  In fact, in my 20+ years of practice, I've only seen one restriction requirement traversed.  I just assumed the examiner would fight that like anything else.

I'm still curious about stupid prior statements that don't affect prosecution.  Suppose prior counsel argues in a response to an Office Action that "the present invention reduces the amount of computer processing resources used" in arguing against combination of references that would increase use of resources.  I think that's a stupid statement because, if it's accepted as a disclaimer, all someone else would have to do to avoid infringement is implement the claimed invention in an inefficient manner.  Suppose the examiner doesn't buy it, maintaining the obviousness rejection -- I'm pretty confident that's a frequent and likely scenario.  Can you take that back?  Can you say "The invention as claimed covers both efficient and inefficient embodiments" and argue for non-obviousness on other grounds to effectively undo the stupid prior statement?

In fact, I see that kind of stupid statement fairly regularly -- arguing that the claimed invention yields different results than the cited art rather than arguing that the cited art wouldn't infringe the claim.  As I think about it, I have probably tried to undo stupid prior statements a number of times.  The effectiveness of such undoing would only be known through litigation and none of those cases have been litigated.

I realize this is getting a bit off topic because the OP dealt specifically with a statement in traversing a restriction requirement, but I wonder.

Regards.

[klaviernista]

I understand what you are saying and the point you are trying to make.  Just wanted to interject that it is highly unlikely that the examiner will question an Applicant admission that B is an obvious variant of A. 

I see.  I've never challenged or even have seen a challenge based on admitted obviousness.  In fact, in my 20+ years of practice, I've only seen one restriction requirement traversed.  I just assumed the examiner would fight that like anything else.

I'm still curious about stupid prior statements that don't affect prosecution.  Suppose prior counsel argues in a response to an Office Action that "the present invention reduces the amount of computer processing resources used" in arguing against combination of references that would increase use of resources.  I think that's a stupid statement because, if it's accepted as a disclaimer, all someone else would have to do to avoid infringement is implement the claimed invention in an inefficient manner.  Suppose the examiner doesn't buy it, maintaining the obviousness rejection -- I'm pretty confident that's a frequent and likely scenario.  Can you take that back?  Can you say "The invention as claimed covers both efficient and inefficient embodiments" and argue for non-obviousness on other grounds to effectively undo the stupid prior statement?

In fact, I see that kind of stupid statement fairly regularly -- arguing that the claimed invention yields different results than the cited art rather than arguing that the cited art wouldn't infringe the claim.  As I think about it, I have probably tried to undo stupid prior statements a number of times.  The effectiveness of such undoing would only be known through litigation and none of those cases have been litigated.

I realize this is getting a bit off topic because the OP dealt specifically with a statement in traversing a restriction requirement, but I wonder.

Regards.

I think the answer is that you might get a "pass" from the examiner, but (provided the case is important enough) some litigator down the stretch is going to try very hard to leverage those stupid statements in support of his or her client's position.