Thursday, April 29, 2010

Remember "Joe Friday" when prosecuting

The CAFC in Bradford v. Conteyor noted:

However, we also agree with the district court that Bradford is estopped from
arguing for an earlier priority date for the ’096 patent by the prosecution history of that
patent. In one of his earlier rejections, the examiner rejected the claims as obvious in
light of the ’119 patent combined with the Rader patent. The examiner specifically
stated that the Rader patent taught a “side wall having [an] opening.” In response,
Bradford told the patent examiner that the ’119 patent did not teach the very feature that
makes the invention of the ’096 patent side loading. Specifically, Bradford argued that
the ’119 patent “clearly does not teach a dunnage structure having an open end which
is in alignment with an open area of a side structure to allow access of the dunnage
structure for transferring product into and out of the dunnage structure from a side of the
container.” Bradford further argued that when combined with the side opening taught by
the Rader patent, the ’119 patent would still not render the ’096 patent claims obvious.
Bradford’s arguments were apparently successful. In the next office action, the
examiner relied on a different prior art reference, Kupersmit, in rejecting the claims as
The applicants’ statement to the examiner is a compelling disclaimer of scope
such that the ’096 patent is not entitled to an earlier priority date. See Microsoft Corp. v.
Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (“We take the patentee at its
word and will not construe the scope of . . . [a] patent’s claims more broadly than the
patentee itself clearly envisioned.”). That is because arguments made to persuade an
examiner to allow an application trump an ambiguous disclosure that otherwise might
have sufficed to obtain an earlier priority date. See Standard Oil Co. v. Am. Cyanamid
Co., 774 F.2d 448, 452 (Fed. Cir. 1985) (holding that any argument made to convince
the examiner of the patentability of the claimed invention “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”). We therefore affirm the court’s
decision limiting the priority date of the ’096 patent to its own filing date.


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