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Author Topic: Possible to win an appeal with prosecution disclaimer?  (Read 1601 times)

bluerogue

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Re: Possible to win an appeal with prosecution disclaimer?
« Reply #15 on: 05-14-18 at 02:05 pm »

Perhaps this interpretation is reasonable, perhaps it isn't (Board might plausibly rule either way), but if it's not what the applicants meant and it wasn't a foreseeable interpretation until the examiner came up with it, why shouldn't applicants be able to disclaim, since they can't get another free bite at the apple to amend?

If it's plausibly reasonable (per above), then it's foreseeable.  Applicants understand that claims are interpreted under BRI.  Since applicant is in charge of the language of the claims, they are the ones who bear the burden of getting it right in light of an interpretation that is reasonable, but applicant did not mean. Differing plausible interpretations is not the same as black = white; it's grey = silver.  Black = white is a BunRI situation. And as explained above, a disclaimer would likely get you claims that were never properly examined.   
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Robert K S

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Re: Possible to win an appeal with prosecution disclaimer?
« Reply #16 on: 05-14-18 at 04:21 pm »

If I correctly understand what you're saying, and if the full implications of it are considered, then the Federal Circuit expressly repudiated the position you're advocating for in In re Smith International, Inc., 871 F.3d 1375 (Fed. Cir. 2017): applicants do not have the responsibility to avoid prosecution traps wherein examiners interpret claim language in ways that might be "plausibly reasonable" (to use your term) but still not consistent with the specification.  In stating that "[t]he correct inquiry in giving a claim term its broadest reasonable interpretation in light of a patent's specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner", the appeals court rejected the idea that applicants should be burdened with foreseeing every possible misconstruction and drafting against it.

Just because a PTAB panel might "plausibly" (perhaps I should have used the term "possibly" as an indicator of outcome probability) find an interpretation to be reasonable doesn't mean the construction was foreseeable at the time of drafting.  Permitting for prosecution disclaimer so that claims are interpreted consistent with the specification would end debate and save from unnecessary appeals at or beyond the PTAB to combat improper constructions.
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bluerogue

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Re: Possible to win an appeal with prosecution disclaimer?
« Reply #17 on: 05-14-18 at 06:45 pm »

I would disagree with what In re Smith Int'l says.

The holding in Smith is that "[w]e conclude that the Board’s construction of “body” was unreasonably broad. Even when giving claim terms their broadest reasonable interpretation, the Board cannot construe the claims so broadly that its constructions are unreasonable under general claim construction principles.  The protocol of giving claims their broadest reasonable interpretation . . . does not include giving claims a legally incorrect interpretation divorced from the specification and the record evidence.”  (internal quotes, citations omitted)

Smith is directed to whether the examiner and board gave a term a proper construction and says nothing about disclaimer.  Moreover, because Smith is about BRI, it says nothing about whether an applicant can disclaim a plausible or possible interpretation by the examiner.

Here is your quote in full context:
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The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is “consistent with the specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (citation and internal quotation marks omitted); see also In re Suitco Surface, 603 F.3d 1255, 1259–60 (Fed. Cir. 2010). The Board emphasized that the patentee here did not act as a lexicographer, and that the specification neither defines nor precludes the examiner’s reading of the term “body.” Accordingly, the Board found that nothing in the specification would disallow the examiner’s interpretation, rendering it “reasonable.” However, following such logic, any description short of an express definition or disclaimer in the specification would result in an adoption of a broadest possible interpretation of a claim term, irrespective of repeated and consistent descriptions in the specification that indicate otherwise. That is not properly giving the claim term its broadest reasonable interpretation in light of the specification.

It is clear that in Smith, the Fed. Cir. was concerned about BRI and not about disclaimer or the idea about foreseeing every possible misconstruction.  It was a straightforward application of BRI and not of competing plausible or possible interpretations.  I'll let the legally trained among us draw their own conclusions about the interpretation of the quoted sections of Smith.  Suffice it to say, we disagree with what Smith says concerning disclaimer and claim interpretation. 

Edit to clean up the quote.
« Last Edit: 05-14-18 at 06:53 pm by bluerogue »
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Robert K S

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Re: Possible to win an appeal with prosecution disclaimer?
« Reply #18 on: 05-14-18 at 07:11 pm »

I didn't say Smith said anything about disclaimer.  I say the Smith runs counter to the concept of interpretation traps that your previous post seems to think are permissible.  The interpretation trap I refer to arises when an examiner provides an unforeseeable interpretation of claim language, often upon after what the examiner considers the "close" of prosecution, in order to sustain a rejection.  Even if the unforeseeable interpretation can be amended around (i.e., even if support exists in the specification for an amendment that would definitively rule out the interpretation), such an amendment would cost a prosecution cycle's worth of time and likely an RCE fee.  The examiner's rationale in making the interpretation often involves the observation, stated or implicit, that the spec does not definitively rule out the interpretation.

You said, "Since applicant is in charge of the language of the claims, they are the ones who bear the burden of getting it right in light of an interpretation that is reasonable, but applicant did not mean."  I agree that applicants should make all attempts to draft to avoid foreseeable interpretations, but not all examiner interpretations of claim language are foreseeable, and it is certainly not the case that an interpretation is foreseeable simply because the PTAB might credit it.  To repeat what I stated about Smith, in stating that "[t]he correct inquiry in giving a claim term its broadest reasonable interpretation in light of a patent's specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner", the appeals court rejected the idea that applicants should be burdened with foreseeing every possible misconstruction and drafting against it.
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lazyexaminer

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Re: Possible to win an appeal with prosecution disclaimer?
« Reply #19 on: 05-14-18 at 08:51 pm »

So if an interpretation isn’t foreseeable from the spec it’s not reasonable. So you argue BRI and win. You want to make up a new doctrine to fight bad interpretations, bad finals, and bad affirmances, but we already have mechanisms to take care of those things (that I imagine you’ll say are inadequate but we have them). Well I think a solution of having the claims mean something that they don’t say is also inadequate. We can agree to disagree I guess.
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Robert K S

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Re: Possible to win an appeal with prosecution disclaimer?
« Reply #20 on: 05-14-18 at 11:10 pm »

Well I think a solution of having the claims mean something that they don’t say is also inadequate.

Claims can always be twisted to mean things they don't say, but at least with disclaimer there is removed the possibility of the claims ever being effectively argued to have the disclaimed meaning.  Moreover, I don't think claims with a bunch of nonsensical tacked-on negative limitations are helpful to the end user (the reader who is the potential infringer) anyway.  Those looking for clear reading would want claims kept free of artificial manipulations meant to satisfy grasping-at-straws interpretations made during examination solely for the purpose of maintaining rejections.

To the extent that disclaimer would constitute a "new doctrine" I agree that it could get pretty messy, in that rules would need to be developed to proof against misuse.  Disclaimer shouldn't be useful to transform the invention into something not contemplated at the time of filing, or in other words, to circumvent the written description requirement of section 112(a), as one example.  Most of the cases where disclaimer would be useful, it would be to chip away at breadth asserted by the examiner that is not contemplated by or supported by the specification, anyway.

[Continued in next post, had to break up for post word limitations]
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Robert K S

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Re: Possible to win an appeal with prosecution disclaimer?
« Reply #21 on: 05-14-18 at 11:11 pm »

FWIW, here's what the Board has recently said about prosecution disclaimer:

Ex parte Prebio, No. 2012-007497 (P.T.A.B. Nov. 14, 2014):

"Appellant . . . does not allege that the specification requires such a narrow construction, does not identify any prosecution disclaimer that limits the scope of this claim term, and does not offer any dictionary definitions or other extrinsic evidence that one of ordinary skill in the art would construe this claim term so narrowly."

This first one is curious because it implies that it might be effective, in contrast to these next two, which rule it out:

Ex parte Aloni, No. 2010-012431 (P.T.A.B. May 14, 2013):

"[A] prosecution disclaimer narrows the ordinary meaning of claim terms in federal court by excluding specific claim term interpretations that were disclaimed during prosecution.  Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003).  A prosecution disclaimer requires 'clear and unambiguous disavowal of claim scope,' Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 833 (Fed. Cir. 2003), which appears to be the case here.  [But b]ecause such prosecution disclaimers are a preliminary consideration in determining literal infringement during infringement proceedings in federal district courts, Appellants’ disclaimer statement has no impact on our claim construction.  Rather, 'during patent examination, the pending claims must be given their broadest reasonable interpretation consistent with the specification.'  In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). "

Ex parte Swamidass, No. 2010-002079 (B.P.A.I. Mar. 20, 2012):

Quote
While prosecution disclaimer is a preliminary consideration in determining literal infringement, Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1578 (Fed. Cir. 1995), the USPTO does not review patent infringement issues.  Patent infringement is a federal question that falls under the subject matter jurisdiction of the federal court system.  See 28 U.S.C, § 1331.  The federal courts apply a different standard of claim construction than the USPTO, and may consider a prosecution disclaimer as being a limit on literal patent claim protection through claim construction.  See Biodex Corp. v. Loredan Biomedical, Inc., 946 F.2d 850, 862-63 (Fed. Cir. 1991) (comparing prosecution disclaimer and prosecution history estoppel).

In contrast, during prosecution before the USPTO, Appellant’s claims are given their broadest reasonable interpretation consistent with the specification, and the claim language is read in light of the specification as it would have been interpreted by one of ordinary skill in the art.  In re Amer. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted).  Therefore, Appellant’s prosecution disclaimer statement has no bearing on our claim construction, because the USPTO applies a different standard of claim construction than the federal courts.

But then, here's a slightly older decision where the Board appears to have accepted prosecution disclaimer in the applicant's favor.

Ex parte Jacobus, No. 2009-000997 (B.P.A.I. Jul. 16, 2009):

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Appellant has strenuously argued in the Briefs that “content” as claimed is not media type . . . .

Under the doctrine of file wrapper or prosecution history estoppel, we hold Appellant to this more narrow construction of the claimed “content” where “media type” has been disclaimed by Appellant’s arguments as being a form of content used to determine routing.  Consistent with this construction, we read the instant claims as requiring specific data content in a message to trigger content-based routing.  According to Appellant’s unequivocal interpretation, the mere type of content (e.g., audio or video) would be insufficient to trigger the claimed content-based routing.  See Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir.1985) (ruling that “the prosecution history (or file wrapper) limits the interpretation of claims so as to exclude any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain claim allowance”).  “As a basic principle of claim interpretation, prosecution disclaimer promotes the public notice function of the intrinsic evidence and protects the public's reliance on definitive statements made during prosecution.”  Omega Engineering, Inc., v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003) (citing Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1347 (Fed. Cir. 1998)).  “[W]here the patentee has unequivocally disavowed a certain meaning to obtain his patent, the doctrine of prosecution disclaimer attaches and narrows the ordinary meaning of the claim congruent with the scope of the surrender.”  Omega, 334 F.3d at 1324.
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Itoen

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Re: Possible to win an appeal with prosecution disclaimer?
« Reply #22 on: 05-15-18 at 02:48 am »

In my opinion, clear and unambiguous statements that create prosecution history estoppel should almost have to be accepted by examiners.  I believe it would be beneficial to all parties.  If an applicant states on the record that a claimed blodget does not cover a prior art widget, it's a waste to argue with the applicant since they're going to be held to their position anyway.
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Robert K S

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Re: Possible to win an appeal with prosecution disclaimer?
« Reply #23 on: 05-15-18 at 11:17 am »

In my opinion, clear and unambiguous statements that create prosecution history estoppel should almost have to be accepted by examiners.  I believe it would be beneficial to all parties.  If an applicant states on the record that a claimed blodget does not cover a prior art widget, it's a waste to argue with the applicant since they're going to be held to their position anyway.

Justice requires symmetric treatment.  It makes little sense to me that, the BRI standard notwithstanding, the PTO will use a prosecution disclaimer statement as a damaging admission against the applicant when circumstances favor doing so to reject claims, but will not treat the same statement in the applicant's favor to overcome rejections.
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bluerogue

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Re: Possible to win an appeal with prosecution disclaimer?
« Reply #24 on: 05-15-18 at 01:35 pm »

In my opinion, clear and unambiguous statements that create prosecution history estoppel should almost have to be accepted by examiners.  I believe it would be beneficial to all parties.  If an applicant states on the record that a claimed blodget does not cover a prior art widget, it's a waste to argue with the applicant since they're going to be held to their position anyway.

I'm totally OK with that, but you don't get to do that on appeal.  A disclaimer changes the scope of the claim to be examined. It's basically the equivalent of an amendment to put that disclaimed language into the claim. The examiner may not have examined that interpretation during examination and is essentially getting that free bite at the apple.
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OhioStateJD

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Re: Possible to win an appeal with prosecution disclaimer?
« Reply #25 on: 05-15-18 at 02:04 pm »

Justice requires symmetric treatment.  It makes little sense to me that, the BRI standard notwithstanding, the PTO will use a prosecution disclaimer statement as a damaging admission against the applicant when circumstances favor doing so to reject claims, but will not treat the same statement in the applicant's favor to overcome rejections.

Disclaimers are estoppels.  And estoppels are judicial tools designed to bind your hands (to ensure parties come to the table with clean hands); they do not represent gospel about truth or falsity.  I appreciate justice and symmetry as much as the next person, but disclaimers are not intended to be symmetrical.
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eighteighteight

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Re: Possible to win an appeal with prosecution disclaimer?
« Reply #26 on: 05-15-18 at 03:30 pm »

I know I am beating a dead horse here (prosecution uses BRI in light of spec), but the MPEP also addresses this very explicitly:

Quote
Patented claims are not given the broadest reasonable interpretation during court proceedings involving infringement and validity, and can be interpreted based on a fully developed prosecution record. In contrast, an examiner must construe claim terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record of what applicant intends to claim. Thus, the Office does not interpret claims in the same manner as the courts. In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1321-22 (Fed. Cir. 1989).

Your option here is to argue that the examiner's interpretation is not reasonable. That argument is a disclaimer, and will serve as an estoppel in later litigation should the Board agree with you.

Also, I guess you could do it, but in my experience most prosecution history estoppels do not arise because during prosecution the practitioner writes "We hereby disclaim XYZ." It happens because the practitioner makes an argument that XYZ is not a reasonable interpretation, or that the claims are differentiated over prior art because prior art does not teach XYZ, that argument is accepted by the examiner, and that statement by the practitioner serves as a prosecution history estoppel during later litigation. It is not a formal "We hereby declare a prosecution history disclaimer"

Quote
In my opinion, clear and unambiguous statements that create prosecution history estoppel should almost have to be accepted by examiners.  I believe it would be beneficial to all parties.  If an applicant states on the record that a claimed blodget does not cover a prior art widget, it's a waste to argue with the applicant since they're going to be held to their position anyway.

Great, then I am going to claim only "A widget comprising a gadget," and for every rejection I get, I will say "my gadget does not cover that piece of prior art," until the examiner stops rejecting me.
« Last Edit: 05-15-18 at 03:34 pm by eighteighteight »
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Robert K S

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Re: Possible to win an appeal with prosecution disclaimer?
« Reply #27 on: 05-15-18 at 04:41 pm »

What has the Federal Circuit had to say about prosecution disclaimer?

"Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition."  In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (implying that prosecution history can limit a claim during examination).

"The prosecution history is [in this particular case] equally unhelpful in divining the interpretation sought by appellants. . . ."  In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (implying prosecution history can be looked at for distinguishing the claims during the patentability determination by the USPTO).

"It is true that a 'claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history.'  CCS Fitness v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)."  In re Schwemberger, 410 F. App'x 298, 303 (Fed. Cir. 2010) (quoting a litigation case but applying it to a Board appeal scenario).

See also In re Bhagat, No. 2016-2525 (Fed. Cir. Mar. 16, 2018) (mentioning, but not analyzing, an applicant argument based on "prosecution disclaimer of all compositions containing products from single sources such as olives and walnuts" and holding that "[t]he Board's finding that the references' serving sizes of olives and walnuts meet the 'dosages' in the claims is supported by substantial evidence in the record.").
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