Prosecution-History Estoppel Effect of Examiner Rewrite?

[mersenne]

Does anybody have any pointers for looking at a claim that was re-written by the examiner at the very end of prosecution?  I normally go through from filing to allowance, looking at all the amendments, but in this case, there was a complete rewrite by the examiner at the end.

Good news or bad (for breadth of coverage)?

[still_learnin]

Does anybody have any pointers for looking at a claim that was re-written by the examiner at the very end of prosecution?  I normally go through from filing to allowance, looking at all the amendments, but in this case, there was a complete rewrite by the examiner at the end.

What do you mean by "complete rewrite"?

I've seen some Examiner amendments with a ton of strikethroughs that didn't actually change scope that much. Stuff like "configured to" changed to "operable to." Or adding a wherein to each clause instead of a single wherein at the start. Or purely formatting changes, like adding returns/linefeeds, or changing semicolons to commas.

[mersenne]

The examiner canceled 1-20 and added 21-30.  The new claims are similar in many respects, but include vast tracts of new language.  It would be challenging to figure out the minimal edits to get from the last version to the new claims.  I suppose I could do it, but I'm wondering whether there's enough value to justify billing for doing the work.  Or maybe there's a presumption that a wholesale rewrite gives up all doctrine of equivalents?  I guess that's what I'm wondering: if there's a presumption or rule that means I shouldn't spend time groveling over the claims, because I'm not going to get any lenience in interpretation anyway.

[NJ Patent1]

mersenne:  I've never encountered anything like this – "wholesale rewrite" in an Examiner's amendment!  Really?  If you agree and pay the issue fee, you clearly know you "own" the Examiner's amendments.  Why were the amendments made / new claims substituted?  To overcome prior art or for reasons only "tangentially related" to patentability?  (N.b. 112 establishes conditions for patentability).  Or simply to clarify and render with even greater particularity?  In any event, IMO the claims are client property and client needs to be informed, as best you can, of what they may be surrendering.  As if you could ever say for sure wrt DoE.
 
To address your question; I'm not aware of black letter law that stands for the proposition that a "wholesale rewrite" surrenders all equivalents.  PHE is fact and case-by-case specific re: why the amendments were made and  their estoppel efect.  What's curious to me is that prosecution got so far down the road before Examiner woke up and insisted on "operable to" instead of "configured to", etc.  My gut reaction is that substitutions like these should have minimal effect on PHE/DOE. On their face, such don't appear to me to be all that different and raise the same questions.  How configured?  Operable how?  Both constructions appear to address a result and one is facially no more or less definite than the other. 

[mersenne]

mersenne:  I've never encountered anything like this – "wholesale rewrite" in an Examiner's amendment!  Really?

Yeah, I've never run across it either.  It's not my case (or it wasn't at the time); the patentee just recently showed up to ask whether the claims would cover what a competitor is doing.

What's curious to me is that prosecution got so far down the road before Examiner woke up and insisted on "operable to" instead of "configured to", etc.

No, those are examples from still_learnin.  In this case, there's a Notice of Allowance with examiner's amendment, where the amendment deletes all claims and puts in new ones.  Apparently, patentee's rep agreed after a telephone interview, but I don't see an interview summary.

/shrug.

[novobarro]

If patentee's rep agreed after a telephone interview, patentee's rep should have informed the client and the client should have approved the Ex's amendment.  Has the NOA been reported to the client?  Does the NOA itself discuss the interview?

[mersenne]

If patentee's rep agreed after a telephone interview, patentee's rep should have informed the client and the client should have approved the Ex's amendment.  Has the NOA been reported to the client?  Does the NOA itself discuss the interview?

No discussion of the interview, just that patentee's rep agreed.  And this was all many years ago.  I don't think there's anything I can do about any of that now; I'm just trying to figure out how to play this ball from where it lies.

[midwestengineer]

Does anybody have any pointers for looking at a claim that was re-written by the examiner at the very end of prosecution?  I normally go through from filing to allowance, looking at all the amendments, but in this case, there was a complete rewrite by the examiner at the end.

Good news or bad (for breadth of coverage)?

Bad news.  It opens the door to estoppel.  There is no categorical rule regarding estoppel no matter how it was entered.  If ever litigated the amendments will be a major issue.

If you're trying to ascertain the scope of the claims, you will have to analyze each limitation in view of each limitation of the canceled claims.  Practitioners have tried to play the cancel all the claims and add new claims game to avoid estoppel.  There is lots of case law on the topic that is not kind to the practice.

[NJ Patent1]

"No, those are examples from still_learnin."  Sorry, I just skimmed prior posts.  As you typed, ya gotta play it from where it lies, play cards you are dealt, etc. 

I wouldn't sweat DoE too much.  Nobody knows how far CAFC would stretch the DoE "penumbra" – or not.  DoE doesn't come up that often in my area (life sciences).  Damage to client, if any, has been done.  I part company a bit with Midwest here (but I agree that new claims and newly presented claims are same for DoE).  The reason why amendments were made / new claims proffered– not the amendments per se – should control.

The fact that there is nothing in the record to indicate why amendments were made is damaging "bad news", but rebuttable at trial. 

Shrug and move on?  Depends on present and possible future relationship with client/applicant.  "Many years ago" suggests no chance for a CON? 

Midwest:  recall that DoE never extends the "scope" of properly construed claims.  Just the "right to exclude".  As if it made a difference to an accused infringer.  Picky, picky, picky.  But some CAFC judges occasionally point this out and ya don't know what panel you will draw. 

[midwestengineer]

"No, those are examples from still_learnin."  Sorry, I just skimmed prior posts.  As you typed, ya gotta play it from where it lies, play cards you are dealt, etc. 

I wouldn't sweat DoE too much.  Nobody knows how far CAFC would stretch the DoE "penumbra" – or not.  DoE doesn't come up that often in my area (life sciences).  Damage to client, if any, has been done.  I part company a bit with Midwest here (but I agree that new claims and newly presented claims are same for DoE).  The reason why amendments were made / new claims proffered– not the amendments per se – should control.

The fact that there is nothing in the record to indicate why amendments were made is damaging "bad news", but rebuttable at trial. 

Shrug and move on?  Depends on present and possible future relationship with client/applicant.  "Many years ago" suggests no chance for a CON? 

Midwest:  recall that DoE never extends the "scope" of properly construed claims.  Just the "right to exclude".  As if it made a difference to an accused infringer.  Picky, picky, picky.  But some CAFC judges occasionally point this out and ya don't know what panel you will draw.

Completely agreed, my description was not precise. 

I was thinking in terms of how this fact pattern would impact the cost benefit ratio of litigating the patent.  Adds risk.  I mostly deal with electric/computer inventions where DOE is a frequently seen issue.