Recapture: Disclaimer in Parent Must be Rescinded in Continuation

Hakin v. Canon-Avent (Fed. Cir. 2007).

Hakim sued Avent for infringing his leak-resistant drinking cup patent. After claim construction, the district court found no infringement.

The asserted patent was filed as a continuation. In the original application, Hakim argued over prior art by stating that the flexible-member opening was a “slit.” When Hakim filed his continuation, he notified the examiner that the new claims were broader than those previously allowed. The Examiner then allowed the new claims without rejection.

Disclaimer in Parent: The usual rule is that “an applicant cannot recapture claim scope that was surrendered or disclaimed” even when a continuation is filed. However, “a disclaimer made during prosecution can be rescinded, permitting recapture of the disclaimed scope.” In order to rescind a disclaimer, ”the prosecution history must be sufficiently clear to inform the examiner that the previous disclaimer, and the prior art that it was made to avoid, may need to be re-visited.”

Applying this rule to Hakin’s prosecution history, the court found that simply informing the examiner of the new broader claims was insufficient to rescind the prior disclaimer of scope.

Notes:

29 thoughts on “Recapture: Disclaimer in Parent Must be Rescinded in Continuation

  1. “why limit this to continuations? Shouldn’t the same reasoning (if it can be called reasoning) apply to any amendment that broadens a previously-argued claim?”

    I agree. What you say makes a lot of sense. Trouble is, in MBO v Becton Dickinson (link to patentlyo.com), the Court seems to have reached the opposite conclusion under similar facts. MBO has to do with a broadening re-issue which the USPTO allowed without comment. The District Court took away the broadening, saying it was impermissible recapture. The District Court’s ruling appears consistent with Hakim, but lo! the FCA disagreed. I assume the patentee in MBO did not explicitly rescind the disclaimer which was implicit in his accepting the original granted claims (as per Johnson & Johnston).

    Both Hakim and MBO are based on the same principles for applying prosecution history estoppel in construction, no?

  2. Quote: “The usual rule is that ‘an applicant cannot recapture claim scope that was surrendered or disclaimed’ even when a continuation is filed.”

    This has never been the usual rule.

    When the court starts from a false premise, should we really be suprised that they arrive at a nonsensical conclusion?

    I would bet that MOST continuations are (a) filed in an attempt to get broader claims than their parents, and (b) do not recind any disclaimers made during prosecution of their parents.

    Granted, it is well established that comments about a particular limitation in one claim can be used to narrow that same limitation in another claim, even if that other claim is in a child application.

    What is new here is that comments about a particular limitation in one claim are being used to narrow a claim in which that particular limitation has been obviously and intentionally removed.

    The facts of this case are very similar to Gentry. Both cases punish the patentee for having claims that are broader than one of the disclosed embodiments. However, the punishments differ. In Gentry, the claims were invalidated. Here, they are merely narrowly interpreted. The difference in punishment may hinge on the fact that Gentry disclosed no alternative embodiments, while Hakin did.

    Points to ponder:
    - should a claim allowed by a diligent Examiner be interpreted more broadly than the same claim allowed by a lazy one?
    - why limit this to continuations? Shouldn’t the same reasoning (if it can be called reasoning) apply to any amendment that broadens a previously-argued claim?

  3. What if Hakim’s abandoned parent application had issued? Would the ruling herein cause statutory double patenting?

    If the words used in a claim must be construed according to how they were argued over the cited art, then does not this case mean that even if the words are changed, the claim cannot have a broader scope, unless it is re-examined and allowed in light of the cited art?

    If Hakim had gotten a new examination, but the broader claims were found allowable, would that have changed the outcome?

  4. After even more thinking, it appears that the Examiner in fact did not prosecute the Hakim’s continuation “bona fide”: he/she did not give the term “opening” the plain meaning or the broadest possible interpreatation in view of specification (excluding prosecution history). See MPEP 2111.01 “Plain Meaning”. The possibility of that the Examiner had allowed the continuation by mistake was considered in my comments above; they all stay the same with this refinement. In any case, the responsibility for the outcome rests on Hakim, as he did not file arguments together with the continuation, and accepted the Notice of Allowance without the Reasons for Allowance. Hence, all other above considerations seem to stay valid.

  5. Anthony, thank you very much for your comments. I think that their length and level of detalization are very appropriate in view of the issue at stake (the issue is the fortune of many recapture cases, either future, pending, or issued, in continuations or not). It seems to me that we got very close on the most important points, and the way we think is in essence similar, because many of the things that you wrote were also on my mind, as you can see for example from my first post; I however would use different accents in several places.

    So to start, I’ll adhere to your terms, slightly redefined. In “forward” prosecution estoppel an applicant makes damaging statements the public will become fully cognizant of. In “reverse” prosecution estoppel an applicant fails to undo prior damage by unsuccessfully soliciting cognizance of his new position, i.e. the applicant fails to create a “recapturing rescindment”. These terms can be used not only in cases involving a continuation, but in case of any recapture attempt, e.g. taking place within a single application. No recapture is legalized without a record of “recapturing rescindment”.

    In my opinion, recapturing rescindments group differently, mostly in three large groups:
    1) explicit rescindments by the applicant (“constructive recapturing rescindment”);
    2) responses and actions by an examiner explicitly complementing partially explicit rescindments of the applicant (“summary recapturing rescindment”);
    3) responses and actions by an examiner explicitly construing implicit rescindments of the applicant ( “effective recapturing rescindment”).

    Here is my reasoning. On Hakim’s case, the Fed. Cir. opinion decided: “Although a disclaimer made during prosecution can be rescinded, permitting recapture of the disclaimed scope, the prosecution history must be sufficiently clear to inform the examiner that the previous disclaimer, and the prior art that it was made to avoid, may need to be re-visited”!

    Considering the constructive rescindments, they might be done with a substantial adherence to section 714.02 of the MPEP, quoted in the second of my comments above. Alternatively or additionally, for the continuation cases the Gideon’s disclaimer can be used. It can be put in a different form to relieve examiners from reviewing all prior art on record (the new disclaimer should invite to re-visit only the prior art relevant to the previous disclaimer), and to prepare it for use with all types of applications.

    Concerning the summary rescindments, they may be formed for example by Applicant overriding the previous disclaimer and Examiner voluntarily re-visiting the applied prior art. For example, in Hakim’s case, he might copy and paste his disclaimer into a new Word file; insert “opening” and, whatever other terms he wanted, into it; remove the references to publications cited in the Office Action [Robbins III, Bachman, and Belcastro] from it; and file the new disclaimer together with his continuation. Examiner than might write in Reasons for Allowance: “Robbins III, Bachman, and Belcastro do not teach or suggest a no-spill mechanism having an opening”. This way a solid evidence will be formed.

    With regards to the effective rescindments, they may be created by Examiner, for example by voluntarily issuing Reasons for Allowance in addition to the Notice of Allowance. Had this happened in the Hakim’s case, Hakim would be saved, because, as it is visible from point “C” of me previous post, attached Reasons for Allowance would indicate that the scope of the claim had changed, while the absence of the Reasons signals that the scope of the claim hadn’t change.

    The effective rescindment is missed in Hakim’s case, because the Examiner intentionally or unintentionally didn’t appreciate Hakim’s non-bona fide “broadening”. Possibly, the Examiner thought that with the enlarged scope Hakim’s claim would be invalid, and the Examiner was too lazy to write a new rejection or repeat his previous rejection. Indeed, he might expect that Hakim would correctly interpret the absence of Reasons for Allowance: Hakim was represented by a Patent Attorney or an Agent, i.e. a person supposedly knowing the PTO rules. Possibly, the Examiner didn’t want to give to Hakim a larger claim scope at expense of the public (including Avent, as well as you, Gideon, Iris and Anthony), without making Hakim to bona fide indicate that he wanted this scope. Possibly, though not so likely, the Examiner by mistake thought that a Notice of Allowance would be enough.

    However, if the Examiner did everything correct, and intentionally didn’t write the Reasons for Allowance, he did a job in strict letter accordance with the MPEP, which regulates examiners actions. Hakim’s argument than works against himself. I quote it here: “The presumption of regularity supports the official acts of public officers, and, in the absence of clear evidence to the contrary, courts presume that they have properly discharged their official duties” (United States v. Chemical Foundation, 272 U.S. 1, 14-15, 1926). Federal judges thus had no reason to think that the Examiner forgot by mistake to send to Hakim the Reasons for Allowance.

    Even if the Examiner did a formal mistake, it, I guess, should not have helped Hakim: “Imperfection in patent examination, whether by an Examiner or by an applicant, does not create a new defense called “prosecution irregularities” and does not displace the experience-based criteria of Kingsdown Medical Consultants v. Hollister (Fed. Cir. 1988) (en banc), cert. denied (1989)”, Magnivision Inc. v. The Bonneau, Fed. Cir. 1997.

    Is it true that almost everyone here chose to sympathize to the Hakim’s side? (Clearly this stated only Gideon: “Wow. A disconcerting opinion to say the least. Score Big Corp – 4, Little Guy – 0″). From my point of view, Hakim’s attorney intentionally or unintentionally failed to prosecute the application bona fide. He didn’t explicitly explain the recapture, didn’t contact the Examiner to ask to issue Reasons for Allowance, didn’t withdraw from the unfavorable Allowance. Yes, my first thought about the case was that Hakim accepted the Allowance by mistake; but why to sympathize? In any case, it is very possible that the Hakim’s patent would be invalid with the broad claim construction: Avent stated that, and Avent was the side supplying legally sound arguments in ths case. Further, the Hakim’s attorney knew to abandon cases, pay issue fee, to create and keep alive a chain of continuations, to file and to pay for applications in Canada, Europe, and Japan, to keep a dependent claim allowing use of the doctrine of claim differentiation (I refer to point “3″ in the first of my comments), but the Hakim’s attorney “didn’t know” to claim orifice or any other embodiment of an “opening” in a dependent or in an independent claim. How is that? How could the Hakim’s attorney forget to claim all the various embodiments? It might be because the Hakim’s attorney did not want to cause a rejection, and on purpose played with the Examiner some sort of interpretation game. To an unquestioning observer such Attorney’s actions might seem simple-hearted, but to me they seem brilliant! It is very probable, that Hakim’s patent attorney has intentionally made a narrow, limited by prior art, claim look maximally scary (like cats and other animals do, please see my lowermost comment). If I were a law student, I might even check the Avent’s invalidity argument and the files of this patent attorney, Mr. Morris Cohen, to see whether this is his work style. But I am not… Ok, further: Hakim’s side knew not to settle, to go to a District Court, then with their crystal clear narrow claim to the Federal Circuit, and that’s all while one of Hakim’s continuations / divisionals is still pending before the USPTO! (Though for the latter, there may exist an excuse if there would arise 135 b ). Hakim’s side also knew to bring to the Federal Circuit a second, invalid, patent. Isn’t it all patent-troll like behaviour? In fact, according to internet, at least one Hakim’s company, Luv N’ Care, Inc, rather frequently participates in litigation, in various courts. I personally see no problem with that, but wouldn’t sympathize them without knowing their motives. As Anthony noted, if it had been shown that Hakim’s motives were ill intent, this might be even a case for inequitable conduct, don’t know new or not. However, I personally do not see a provable ill-intent, the totality of the prosecution record looks rather like an Applicant together with Examiner were creating a patent narrowed by a prosecution estoppel disallowing the recapture!

    I think that Hakim’s case may be a call for a change in the MPEP (or whatever other document led to the issue of his patent) or to the removal of prosecution estoppel doctrine. Zeke wrote: “If that really was the basis for allowing the claims, shouldn’t the examiner have done his job and made sure that the claim accurately defined the bounds of the invention? It would have taken about half an hour to type a request that the applicant amend opening to slit. The patent as issued does not promote progress because it appears to claim more than it really does, and thus, would scare people away from that area of endeavor”.

    I agree with Zeke, not on everything, but on what came out of such prosecution as a result. I mean I think that the examiner actually has done his job and, formally, made sure that the claim accurately defined the bounds of the invention, because the estoppel was on record at the time of issuance of the Allowance, but the result was nevertheless bad: the patent as issued appeared to claim more than it really did. Perhaps, this occurred because the Examiner followed the letter, but not the spirit of MPEP. In fact, the section 1302.14 “Reasons for Allowance” says: “Prior to allowance, the examiner may also specify allowable subject matter and provide reasons for indicating such allowable subject matter in an Office communication” . Section 1302.14 also manifests “One of the primary purposes of Reasons for Allowance is to improve the quality and reliability of issued patents by providing a complete file history which should clearly reflect, as much as is reasonably possible, the reasons why the application was allowed. Such information facilitates evaluation of the scope and strength of a patent by the patentee and the public and may help avoid or simplify litigation of a patent. … Where specific reasons are recorded by the examiner, care must be taken to ensure that statements of reasons for allowance (or indication of allowable subject matter) are accurate, precise, and do not place unwarranted interpretations, whether broad or narrow, upon the claims. The examiner should keep in mind the possible misinterpretations of his or her statement that may be made and its possible effects … In most cases, the examiner’s actions and the applicant’s replies make evident the reasons for allowance, satisfying the “record as a whole” proviso of the rule. This is particularly true when applicant fully complies with 37 CFR 1.111 (b) and (c) and 37 CFR 1.133(b). Thus, where the examiner’s actions clearly point out the reasons for rejection and the applicant’s reply explicitly presents reasons why claims are patentable over the reference, the reasons for allowance are in all probability evident from the record and no statement should be necessary. Conversely, where the record is not explicit as to reasons, but allowance is in order, then a logical extension of 37 CFR 1.111 and 1.133 would dictate that the examiner should make reasons of record and such reasons should be specific”. I think that the most important component that lacked in the Hakim’s case, besides bona fide prosecution by the Applicant, is Examiner’s active adherence to the spirit of the above MPEP quote, let’s call it bona fide prosecution by the Examiner. This case can all be due to that Examiner decided to catch the Hakim’s Patent Attorney in a trap, in which he wanted to be, and thus the Examiner did ill service to the public (e.g. ill service to Avent)!

    I also don’t understand why some patent attorneys seem to immediately disagree with the Federal Circuit. Let me quote: “While it’s obviously moronic of the court to assume that the Examiner wasn’t aware of the new language or just assumed that all of the arguments made in the parent were being made in the continuation, it’s not obvious how to counter the idiocy”; “Wow, this case really really smells. It’s not only illogical to lift arguments that were made in support of a first set of claims and apply them to a second set of claim in a newly filed application, it’s insulting to the Examiners”; “My measured attorney response: Bullsh–”. ; “The trick here is that the author is Newman — she just doesn’t care that much about doctrinal clarity. Michel and Rader are too lazy to call her on it, it seems.”; “One more time on the “you have got to be kidding me” decision bandwagon”. Is there any good for anyone in such critics, if it is unsupported by any sound argument?

    Returning to the most important lessons of this case, relying on a recapturing rescindment to be included in a comment to unfavorable Reasons for Allowance turns out to be a bad idea, though at first look it seemed that it might work. It seems that the key should be in the MPEP (or in regulations, but there is no time to compare MPEP with regulations now, and in fact it would not matter), in that version of it, which rules Examiner actions about the time of allowance. Examiners should and are presumed by public to follow the MPEP, therefore whatever is said in it should determine the effectivity of recapture, according to the Fed. Cir. Hakim’s decision. And in fact, MPEP’s Section V of 1302.14 speaks on the “Applicant’s Comments on the Reasons for Allowance”:
    “Comments filed by the applicant on the examiner’s statement of reasons for allowance … should be clearly labeled “Comments on Statement of Reasons for Allowance.” Comments will be entered in the application file by the Office of Publication with an appropriate notation on the “Contents” list on the file wrapper. The application file generally will not be returned to the examiner after the entry of such comments made by applicant on the examiner’s statement of reasons for allowance. Therefore, the absence of an examiner’s response to applicant’s comments does not mean that the examiner agrees with or acquiesces in the reasoning of such comments. See 37 CFR 1.104(e). While the examiner may review and comment upon such a submission, the examiner has no obligation to do so”.
    This was the current version of the MPEP. The previous version says basically the same. Thus, an applicant can not rely on Comments on Statement of Reasons for Allowance, except than for the disclaiming, narrowing, the subject matter. (Anthony, your considerations on whether Hakim should have withdrawn or not, might be relevant here; though for me the answer is clearly yes, Hakim should have withdrawn, as American associates to our group once did).

    So doing, i.e. considering directions for Examiners in MPEP, various other prosecution situations can be considered. Rephrasing Anthony, “to “perfect” non-bona fide rescindment you need to get the examiner to respond or act in a way that acknowledges your at least partially non-explicit and unclear intention”. In any case, the goal is to create a recapturing record which would be explicit against a well-known objective criteria of prosecution estoppel.

    Remembering now the very beginning of this contemplation, what issues are at stake, the following can be concluded. While some issued patents prosecuted with an attempt of recapture, either continuations or not, may be restricted to unfavorable claim constructions after Hakim’s decision (clarifying conditions for recapture), many other issued patents are left in safety, despite that they might have been prosecuted without full adherence to the “Must Be Fully Responsive” rule (MPEP 714.02). To which group a particular file belongs, should depend on the file wrapper, evaluated step by step along the MPEP directions to Examiners.

    * Question: Why does my cat’s tail flare up/go bushy?
    Answer: My cat’s tails do that whenever they come near dogs, or they’re chasing them, so they do it mostly when they’re scared or pissed off, they’re trying to scare off whoever they are frightened by. It’s pretty much telling someone not to mess with them. ( link to answerbag.com )

  6. The problem with this case is that neither the Federal Circuit’s opinion nor the district court’s opinion recited comments from the prosecution history (or the patent for that matter) that demonstrated that the applicant disclaimed the ordinary meaning of the term “opening” — which is broader than the term “slit.”

    Interestingly, the district court mentioned that “Hakim went to great lengths to distinguish *his invention* emphasizing that *his invention* utilizes ‘two separate mechanisms.’” (emphasis mine) The district court further writes, “The prosecution history makes perfectly clear that Hakim specifically distinguished *his invention* from the prior art by limiting it to an apparatus with both (1) a slit which closes when suction is not applied, and (2) a second closure consisting of a blocking element which the slit rests against.” (emphasis mine)

    Did the applicant actually use the phrase “my invention” or the phrase “the invention”? If so, this is not that shocking of an opinion. But I have to think that if the applicant had used either of these phrases, the courts would have quoted them.

    The district court used the word “clear” and “clearly” nine times in its analysis. If it’s so clear that the applicant distinguished all embodiments of his invention (as opposed to a particular embodiment recited in the claims) from the prior art, why couldn’t the Federal Circuit and the district court provide better evidence from the prosecution history?

  7. Iris & Nikolai,

    Iris, sure most prosecutors would agree with you. But I think what’s at play here is something deeper.

    Nickolai, you’re understanding of the issue is in the correct direction. However concerning your point A), because the examiner issued a notice of allowance, he must have accepted the second continuation as being “fully responsive.” It isn’t the lack of responsiveness per se. Rather it’s what did the examiner think Hakim was responding to? You correctly infer in your point B) that it can be construed the examiner assumed Hakim meant “opening” to be no more than “slit”, because he made no attempt to traverse the prior rejection. However, we all suspect what Hakim inferred: the examiner thought, “ya, ‘opening’ that’s supported by all the various slits, easy disposal.” But that’s not on the record. It could be construed the other way. What really scares people is that Hakim’s notice of broadening was unconvincing to the court, or worse irrelevant. Strict adherence to section 714.02 of the MPEP may have prevented Hakim’s dilemma.

    Your first sentence in point (C) is probably too harsh. I think the court is signaling that Hakim’s error constituted a failure to convince rather than a presumptive ill intent. A case for ill intent, though, can be made. Hakim v. Avent-Canon may be a new rallying cry for the dreaded charge of inequitable conduct. However success requires evidence of intent.
    You also state in point C):
    > Hakim also should have known that Applicants or patent owners can comment >”Reasons for Allowance” and “Notice of Allowance”. Nevertheless, Hakim chose not to >bother the Examiner with a comment.
    >
    >Hence, Hakim created an estoppel. And not by a new law.
    But the interpretation as to what the examiner understood Hakim meant can go either way. Even had Hakim made a comment to the empty notice of allowance (I agree it would have helped), a comment requires no action by the examiner. He may still be estopped. Should Hakim have withdrawn from issue? He had a legitimate dilemma.

    In Salazar v. Proctor & Gamble Co, 414 F.3d 1342, 75 USPQ.2d 1369 (Fed Cir 2005) (link to fedcir.gov) the court held both to reasons for allowance and comments to them presume nothing barring other admissions:
    “This court has recognized that an Examiner’s Statement of Reasons for Allowance ‘will not necessarily limit a claim.’ ACCO Brands, Inc. v. Micro Sec. Devices, Inc., 346 F.3d 1075, 1079 (Fed. Cir. 2003). Consequently, an applicant’s silence regarding statements made by the examiner during prosecution, without more, cannot amount to a “clear and unmistakable disavowal” of claim scope. See 3M Innovative Props., 350 F.3d at 1373-74 (‘Prosecution history . . . cannot be used to limit the scope of a claim unless the applicant took a position before the PTO.’ Schwing GmbH v. Putzmeister Aktiengesellschaft, 305 F.3d 1318, 1324-25 (Fed. Cir. 2002) (emphasis added). ‘An applicant’s silence in response to an examiner’s characterization of a claim does not reflect the applicant’s clear and unmistakable acquiescence to that characterization if the claim is eventually allowed on grounds unrelated to the examiner’s unrebutted characterization.’). After all, the applicant has disavowed nothing.”

    Hakim thought he had nothing to rebut. There was no statement for allowance. Furthermore, had there been a statement for allowance from the prior application it should not have hurt his eventual allowance “on grounds unrelated.” However the “without more”, “grounds unrelated” and “position before the PTO” now become clearer with the holding in Hakim. He had to rebut the possible misunderstanding of his own prior statements!

    Hakim’s estoppel is not as unequivocal as a narrowing amendment. He had reason to believe the examiner looked at his claims anew. 37 CFR 1.104(b): “The examiner’s action will be complete as to all matters, except that in appropriate circumstances, such as misjoinder of invention, fundamental defects in the application, …” It appears that an examiner can rely on prosecution history to impute limitations assuming the applicant has already agreed, thereby creating an honest confusion. The fact that so many practitioners take the opposite interpretation to that of the court demonstrates this. Hakim seems to have had the duty to clarify the possibility of confusion.

    It is helpful that the MPEP guides understanding here, but it does not have the force of law. The court could have pointed to the regulations and concluded Hakim’s failures, instead they simply interpreted the file history against Hakim. The court in Salazar did quote rule 1.104(e) (then rule 1.109 in 1996) to support their holding: “… a statement … on the reasons for allowance … may be specified by the examiner. Failure to file such a statement shall not give rise to any implication that the applicant or patent owner agrees with or acquiesces in the reasoning of the examiner.” (emphasis on last sentence removed). Is it not then reasonable for Hakim to have ignored the non-existent, effectively indeterminate, reason for allowance and assume the examiner did not see any reason to deny patentability?

    My point is to get at any presumptions the court may use against applicants in similar situations in future. The Hakim ruling may not usher-in a grand new doctrine, it may only further refine existing file-wrapper estoppel into different types. But that’s significant enough.

    Hakim benefited from a misunderstanding that appears to constitute a failure to prosecute bone fide. This comes as a shock to most prosecutors, because Hakim’s position seems honorable. He put the examiner on notice and broadened his claim. His intention was clear. But that is not the issue. It was the equivocal lack by the examiner to cognize Hakim’s intention that is the problem. Essentially, Hakim failed to “redoubtably rescind.” Merely filing a continuation with a stated intention to broaden is, we know now, not enough. Even worse, I think a declaration of rescindment, as Gideon drafted above, may not be enough either; though I agree that this is now minimum competent practice.

    As overreaching as the following seems, I fear it is correct: to “perfect” rescindment you need to get the examiner to respond in a way that acknowledges your intention. I call this reverse prosecution estoppel (see my prior post way above). In “forward” estoppel you make damaging statements the examiner is fully cognizant of. In “reverse” estoppel you fail to undue prior damage by unsuccessfully soliciting cognizance of your new position.

    A line of future cases needs to decide two things: 1) what response by an examiner construes effective rescindment by the applicant; 2) what unilateral action by an applicant creates “constructive rescindment.”

    Examiner responses construing rescindment might include: 1) issuing any rejection, even if different than the one in the parent (presumes the examiner reconsidered his original rejection and issued a better one); 2) reasons for allowance that demonstrates the prior rejection is ineffective; etc.

    Constructive rescindment might include (some of which Nikolai and Gideon pointed out):
    1) making a declaration of rescindment with a request for consideration of the file history (we are all praying that this will be enough);
    2) proactively traversing the prior rejection when you file a broadening continuation;
    3) filing a response to an empty reason for allowance such as: “applicant presumes examiner has considered the file history in parent applications xxxx, yyyy and has determined any rejections therein to be immaterial to the present application. Applicant respectfully requests examiner place reasons for allowance on the record in accordance with MPEP 1302.1.”

    Of course, all this is just theoretical more cases need to bare this out. I’m getting a headache from all this speculation, so I’ll take two aspirin and go lie down.

  8. Anthony, thank you for clarification on the hierarchy of doctrines!

    Here is for completeness also my idea on this case. I think the following has occurred:

    A) Hakim chose not to comply with the “Must Be Fully Responsive” rule (MPEP 714.02) when he prosecuted his continuation application. The rule says:
    “The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.General allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section”.

    B) As a result, the Examiner failed to notice Hakim’s “broadening”, and issued an “empty” notice of allowance. Examiner in fact could act so basing on Hakim’s disclaimer in the parent application:

    “Thus, where the examiner’s actions clearly point out the reasons for rejection and the applicant’s reply explicitly presents reasons why claims are patentable over the reference, the reasons for allowance are in all probability evident from the record and no statement should be necessary. Conversely, where the record is not explicit as to reasons, but allowance is in order, then a logical extension of 37 CFR 1.111 and 1.133 would dictate that the examiner should make reasons of record and such reasons should be specific” (the quote is from MPEP 1302.14 “Reasons for Allowance”).

    C) Hakim quietly accepted the allowance, for example because he thought that “opening” was not patentable.

    Hakim very well could know that the Examiner would give reasons for allowance if the would notice the broadening: see subsection “EXAMPLES OF WHEN IT IS LIKELY THAT A STATEMENT SHOULD BE ADDED TO THE RECORD” in the MPEP 1302.14:
    “(B) First action issue:
    … (2) Of a continuing application, wherein reasons for allowance are not apparent from the record in the parent case or clear from preliminary filed matters.”

    Hakim also knew that he should would need to take care, especially because of his narrowing disclaimer:
    “One of the primary purposes of Reasons for Allowance is to improve the quality and reliability of issued patents by providing a complete file history which should clearly reflect, as much as is reasonably possible, the reasons why the application was allowed. Such information facilitates evaluation of the scope and strength of a patent by the patentee and the public and may help avoid or simplify litigation of a patent. … Where specific reasons are recorded by the examiner, care must be taken to ensure that statements of reasons for allowance (or indication of allowable subject matter) are accurate, precise, and do not place unwarranted interpretations, whether broad or narrow, upon the claims. The examiner should keep in mind the possible misinterpretations of his or her statement that may be made and its possible effects”.

    Hakim also should have known that Applicants or patent owners can comment “Reasons for Allowance” and “Notice of Allowance”. Nevertheless, Hakim chose not to bother the Examiner with a comment.

    Hence, Hakim created an estoppel. And not by a new law.

    D) Finally, Hakim with such a weak case dared to go to the Fed. Circuit, while his patent family is still pending.

    I think Hakim may be a patent troll :)

  9. Anthony,

    Thanks for that clarification. Of course, in this case, quite a few of us might think that the prosecution history evidence was not “powerful enough”. I think that Hakim clearly meant to re-broaden the claims and essentially take back his earlier comments relating only to slits.

    Iris

  10. Nikolai & Iris,

    Yes, prosecution estoppel trumps claim differentiation, when the evidence is powerful. Of course, judges can conveniently determine what constitutes “powerful enough.” This was recently reiterated in Anderson Corp v. Fiber Composites. See link to fedcir.gov .

    … [when] there is powerful evidence … we have held that “the written description and prosecution history overcome any presumption arising from the doctrine of claim differentiation.” Kraft Foods, Inc. v. Int’l Trading Co., 203 F.3d 1362, 1368 (Fed. Cir. 2000); see also Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1480 (Fed. Cir. 1998) (“[T]he doctrine of claim differentiation can not broaden claims beyond their correct scope, determined in light of the specification and the prosecution history and any relevant extrinsic evidence. . . . [C]laims that are written in different words may ultimately cover substantially the same subject matter.”).

  11. Nikolai,

    (Just for a little background for everyone, Nikolai and I work together–not in the US, although I am a “young” US patent attorney–and we have been having a little discussion on this case before posting here.)

    1) IMHO, yes, the outcome might have been positive for Hakim had the Examiner referred specifically to the patentability of “opening” in the second allowance–although of course I don’t actually know how the allowance was worded since I haven’t seen the file wrapper.

    On the other hand, how many of you other patent attorneys out there, upon receiving the second allowance (let’s say it didn’t refer to “opening” specifically), would have requested that the examiner specifically examine the “broadened” claim in accordance with the previously raised art and/or confirm that the claim including “opening” was patentable?

    2. I am sure it might have also helped if his response to the original 103 rejection did not refer only to “slit” and/or included the statement that it was not intended to narrow the scope of the claim.

    3. Your third point is well taken, and in my opinion is yet another reason why this decision was just plain bad.

  12. Dear Dennis and all! Can you please comment on the following observations and questions?

    1. According to the case, the word “opening” was placed in claims 1 and 2 when Hakim filed a continuation application after receiving a notice of allowance for claims wherein the word “slit” appeared instead of “opening.” The continuation claims were allowed without any comment or rejection by the examiner.

    Hakim stated that “… there is a presumption that the examiner had assured himself of the patentability of the new claims”.
    Avent stated that “the totality of the prosecution history nonetheless limits Hakim to the embodiment with the slit”.

    The opinion says: “The district court did not err in holding that the examiner’s action in allowing the continuation claims without further prosecution was based on the prosecution argument in the parent”. It also says “… the prosecution history must be sufficiently clear to inform the examiner that the previous disclaimer, and the prior art that it was made to avoid, may need to be re-visited”.

    Would Hakim be saved had he not have accepted the second, “empty”, allowance? In other words, would the court decide positively for Hakim if the second allowance would refer to the “opening”?

    2. Would the court decide positively for Hakim if the Hakim’s response to the Office Action in the abandoned case had not characterized his invention, but contained only the narrowing claim amendment and critique of the prior art? Would it help to Hakim if he included in the response a disclaimer saying that the amendment was not intended to narrow the claim? Would the outcome depend on the reasons in the second allowance?

    3. The Hakim’s patent in various places mentions “an opening such as an orifice or slit”, “opening or orifice 70″, “any form of desired opening suitable for passage of a desired level of liquid can be utilized in the valve”, “the opening 70 can be, for example, a slit, a slot, an orifice, a hole, or so forth”, “in one embodiment, the opening 70 is an X-shaped slot”, “in another embodiment, the opening is a T shaped slot”

    The Hakim’s patent also has claim 28, dependent on the constructed claim 1: “An apparatus as claimed in claim 1, wherein said opening is a slit”. The federal court’s opinion does not refer to this claim.

    Can it be concluded from here that the doctrine of prosecution disclaimer prevails over the doctrine of claim differentiation?

  13. Dennis wrote, “In the original application, Hakim argued over prior art by stating that the flexible-member opening was a ‘slit.’”

    Is this a case in which the applicant, in arguing for patentability, blurred the lines between (1) the claimed “slit” and (2) “the invention” or “an opening” and thus created a disclaimer? If so, how was that line blurred?

  14. Zeke wrote: “It would have taken about half an hour to type a request that the applicant amend opening to slit.”

    1/2 hour?

    Try 5 minutes.

    I can’t remember the last time I received an office action that looked like it had taken more than 1/2 in total to write.

  15. From the opinion:

    “The district court did not err in holding that the examiner’s action in allowing the continuation claims without further prosecution was based on the prosecution argument in the parent.”

    If that really was the basis for allowing the claims, shouldn’t the examiner have done his job and made sure that the claim accurately defined the bounds of the invention? It would have taken about half an hour to type a request that the applicant amend opening to slit. The patent as issued does not promote progress because it appears to claim more than it really does, and thus, would scare people away from that area of endeavor.

  16. One more time on the “you have got to be kidding me” decision bandwagon. Importing a limitation intentionally eliminated to broaden the scope of the patent on the basis of a disclaimer that doesn’t even appear to be a true disclaimer (the slit seems to me to be a side comment rather than the main thrust of the argument for patentability) of the eliminated limitation?

    To cite Kevin Spacey in Swimming with Sharks: “And now try to follow me, because I’m gonna be moving in a kind of circular motion, so if you pay attention, there will be a point!”

    Anyone care to comment on the likelihood of an en banc decision overturning this horrendous panel decision?

    I don’t see it as likely myself.

    I guess common practice now should be to disclaim anything not said in the particular response being filed…

  17. [quote]This case stands for the proposition that comments made to support claims in prosecution of a parent can be used to restrict claims in a continuation.[/quote]

    That’s not even the scary part of this opinion. What is scary is that an argument made with respect to a limitation (slit) appearing in an earlier application/claim can be imputed to a claim that does not contain the limitation.

    Most assuredly, had Hakim amended from “opening” to “slit,” even without argument concerning patentability of one or the other, he’d be stuck with “slit.” It’s astonishing that the converse is not true.

  18. OK anon, I went back and reviewed the case in light of your comments.

    My conclusion is that you have no idea what you are talking about.

    You seem to be saying that the “opening” in the asserted claim does not stay open all of the time.

    You wrote: “Indeed, the asserted claim recites that very limitation: “said valve further comprising an opening . . . , closed to the passage of liquid [in its resting position], [and] moving into an open position . . . upon the application of negative air pressure.”"

    Your hack job on the claim is misleading – I hope not intentionall so. You used the ellipses “. . . ” before the word “closed”, and thereby made it seem as if the opening was itself closed.

    Instead the claim reads ” . . . such that said valve is closed to the passage of liquid.”

    Claim 1 is as clear as day. It calls for an opening that is blocked by the “blocking element.”

    Not only does the claim clearly include embodiments in which the opening is always a hole and is either against the blocking element, stopping flow, or sucked away from the blocking element, allowing flow, I think it would be arguable that a “slit” would NOT fall within the scope of the claim because if a slit closes on its own when pressure is released, then it may not, arguably, be called an opening any more.

    So, Anon, in short, I think your claim interpretation is awful, and I think your case interpretation is highly questionable.

    This case stands for the proposition that comments made to support claims in prosecution of a parent can be used to restrict claims in a continuation.

    That, to me, is the take home message.

    But if you argee with Anon that this was not a prosecution estoppel case but rather a claim interpretation case, then you should proceed with continuations without any change in your practice.

    You’ll probably have at least 3 years before one of your continuation patents gets narrowed or invalidated by your disclaimers that you didn’t attempt to nullify upon filing the continuation.

    And it’s questionable as to what extent your mal practice, if indeed I’m correct, will cost you.

    An ounce of prevention . . .

  19. Anon. Good post.

    I’ll have to look into more.

    The problem with taking your position, as I see it, is that the opinion may be applicable to your client’s case at some point and you’ll be left arguing at District Court that the Fed Cir opinion doesn’t say what it says.

    I don’t want to be in that position.

    So my thought is, use language in the continuation that removes as much doubt as possible.

  20. The trick here is that the author is Newman — she just doesn’t care that much about doctrinal clarity. Michel and Rader are too lazy to call her on it, it seems. Nonetheless, this opinion is being read for far more than it need stand for.

    Although the opinion is written in terms of “slit” vs. “opening,” the district court’s finding was more detailed. The district court found that Hakim disclaimed a “slit which closes when suction is not applied.” Even if you let Hakim have “opening” instead of “slit,” the operative point is that Hakim disclaimed “an opening which closes when suction is not applied.” Indeed, the asserted claim recites that very limitation: “said valve further comprising an opening . . . , closed to the passage of liquid [in its resting position], [and] moving into an open position . . . upon the application of negative air pressure.”

    The accused device didn’t have an opening responsive to pressure. Rather, its opening was always open to the passage of liquid. In the accused device, only the blocking element on top of the opening moved to stop or allow liquid flow, whereas in Hakim’s device, the opening itself is responsive to pressure as well as the blocking element. So basically, everyone in this opinion is using “slit” as shorthand for an opening that responds to pressure and “opening” as shorthand for an opening that does not respond to pressure and it thus always open to liquid flow. It’s a case of shoddy opinion drafting, but nothing radical in terms of the result. Hakim is limited to the scope of the claim that actually issued. Shocking, I know.

  21. “I tell the Examiner that the applicant does not concede to the Examiner’s objection for the reasons of record, but that applicant narrows the claims simply to have the case allowed and intends to file a continuation application. Does that work as a rescindment of any disclaimer made in the parent case?”

    Of course not.

    Saying that you don’t agree with the Examiner, in fact, has nothing to do with it.

    You have to say you don’t agree with what YOU wrote.

    That is, the disclaimer, as I read this case, is ANY description of the claimed invention made. It doesn’t matter what you say, if it defines/narrows/describes the invention, then it’s a disclaimer.

    So you need more than a simple “I disgree with the Examiner’s objection but I’m going to file a continuation to pursue the unallowed subject matter.”

    See my last post for one potential form paragraph that could be used when you file a continuation.

  22. I have gotten objections whose grounds I completely disagree with and have traversed on record. However, my client runs out of money. He tells me to accept the narrow claim scope and file a continuation. I tell the Examiner that the applicant does not concede to the Examiner’s objection for the reasons of record, but that applicant narrows the claims simply to have the case allowed and intends to file a continuation application. Does that work as a rescindment of any disclaimer made in the parent case?

  23. Wow. A disconcerting opinion to say the least.

    Score

    Big Corp – 4, Little Guy – 0.

    What this opinion does is take the well established principle of prosecution history estoppel and twist and contort it into a new, very odd estoppel.

    In essence, what this opinion does is take the arugments made in favor of a first claim set in a parent and project them onto a second claim set in a continuation.

    The panel seems to be saying that the only way that you can prevent this projection is to specifically note that the arguments made in the parent – the “disclaimer” – do not apply to the new claim set.

    Pretty simple, if frightening, opinion.

    Add this to the growing list of idiot opinions that weaken patents.

    Continuation practice is dying a slow but sure death, and it appears that now the FC is attacking it as well as the PTO.

    I’m still working on how to handle this.

    While it’s obviously moronic of the court to assume that the Examiner wasn’t aware of the new language or just assumed that all of the arguments made in the parent were being made in the continuation, it’s not obvious how to counter the idiocy.

    This is the worst opinion I’ve seen out of the Fed Cir since the dictionary definition fiasco.

    I suppose that the simple statement in the continuation application that “no arguments or disclaimers made in the parent application apply to this continuation and, consequently, it is asked that the Examiner review the new set of claims in view of all of the prior art of record and any search that he/she deems appropriate.”

    Wow, this case really really smells. It’s not only illogical to lift arguments that were made in support of a first set of claims and apply them to a second set of claim in a newly filed application, it’s insulting to the Examiners.

    I see no defense of this opinion. The prosecution history even referred to “the pending claims” rather than “the invention”. If the arguments were made to the “pending claims”, then it seems obvious that it would not automatically apply to a different set of claims.

    The key line in the opinion is “the district court did not err in holding that the examiner’s action in allowing the continuation claims without further prosecution was based on the prosecution argument in the parent.”

    My measured attorney response: Bullsh–.

    Worrisome case that will require even more legalese.

  24. People are correct to voice concern about an apparent catch-22 conundrum. Here are my speculations to answer some of the questions on the meaning of this case.

    A New Refutable Presumption of Reverse Prosecution Estoppel?

    The court is not saying you cannot recapture a broader scope in a continuation, only that a “new” presumption applies akin to, but not the same as, the litigation recapture prohibition.

    Hakim argues what any prosecutor relies on:

    United States v. Chemical Foundation, 272 U.S. 1, 14-15 (1926) (“The presumption of regularity supports the official acts of public officers, and, in the absence of clear evidence to the contrary, courts presume that they have properly discharged their official duties.”) Hakim states that he did what was appropriate when he flagged this change to assist the examiner, and that the claims as granted should not be unnecessarily narrowed by the court.

    The examiner was fairly notified, so what makes a distinction here? The prior claim was allowed, but it did not issue. It seems that the court has created a reverse prosecution presumption if a prior claim is allowed: an examiner is entitled to assume a broader claim is valid if a narrower claim has already been allowed. That is an applicant bears the burden to point out a how a previously accepted argument to an allowed narrower claim does not apply to a broader new claim. Seems to be form of lack of bone fide prosecution (when was the last time that argument benefited an applicant against an examiner, the board or before the Fed Cir):

    Hakim wrote to the examiner that he was broadening the claims, he did not specifically point out that he no longer intended to be limited to the specific mechanism that he had previously argued was the distinguishing feature of his invention.

    … It is recognized that an applicant can broaden as well as restrict his claims during the procedures of patent examination, and that continuing applications may present broader claims than were allowed in the parent.

    Future cases will determine effective arguments to overcome the “new” presumption. Possibilities include:

    1) Disavowing a prior claim and its scope by stating that abandonment of the previous application effectively rescinds both the claim and its argument of allowance.

    2) Same a 1) but adding an “invitation” to reconsider the previous rejection and apply it to the broader claim.

    3) Same as 2), but now contending how the previous argument does not apply to the broader claim (gulp! Not unless at the point of a gun created by unequivocal precedent!)

    Reinvigoration of Prosecution Estoppel.

    But that is just one aspect. It gets worse, a recapture presumption does operate in prosecution:

    Hakim had the right to refile the application and attempt to broaden the claims. See id. at 1385 (“One may also refile an application even in the absence of any of these reasons [refiling an application in response to a requirement for restriction; refiling in order to present evidence that may not have previously existed; or refiling to support broader claims as the development of an invention progresses], provided that such refiling is not unduly successive or repetitive.”) However, an applicant cannot recapture claim scope that was surrendered or disclaimed.

    So when does one surrender scope? Is a recapture presumption irrefutable? Surely surrender or disclaim should be unequivocal on the part of the applicant. That is a presumption against imputed surrender should benefit the applicant, otherwise no broadening claim can ever succeed. For example, a clear surrender is: making a narrowing amendment in the face of a 102/103 rejection; or making an admission about the prior art. But an imputed, not logically conclusive, surrender should not apply. For example: failing to directly rebut prior art against an obviousness rejection arguing lack of motivation to combine references should not preclude the same argument succeeding against broader claims; or arguing that a 103 rejection lacks elements in your claim shouldn’t preclude rebuttal of the same rejection to a broader claim on different grounds, such as secondary considerations.

    How Distinct from Recapture in Reissue?

    A further question arises: is withdrawal of a previously issued patent sufficient to meet rescindment or is this a constructive reissue subject to the recapture rule? Does any public notification trump refutability? This may become critical if KSR v. Teleflex goes badly and many of us are forced to withdraw patents and re-argue them in continuations on different grounds, such as, having defeated a to-be-weakened standard of motivation in a patent, we then argue secondary considerations in a broadening continuation.

    Perhaps something for Matt, Steve, and Doug to consider over at FedCirc.us .

  25. I wonder if the following form paragraph would work:

    This application is a continuation of prior pending U.S. Patent Application Ser. No. XXXXXXX, filed XXXXXXX, which is herein incorporated by reference in its entirety. Any disclaimer that may have occurred during the prosecution of the above-referenced application(s) is hereby expressly rescinded.

  26. With apologies, please ignore my second post. Mr Noonan is still right, but my dismay is off target.

    In my first post, I meant to say “The Court says that by accepting the narrower CLAIM CONSTRUCTION, the applicant has disclaimed the difference and cannot recapture it by filing a continuation’.

  27. Kevin Noonan is right. The Court seems to apply the recapture rule in litigation to prosecution practice. If so, it would appear that many patents that issued from continuation applications are invalid because their claims contain subject matter surrendered during prosecution of the parent applications.

  28. I must be missing something fundamental here. I thought it is standard US practice to accept what the Examiner will allow for the time being, and file continuations to go for broader scope. The Court says that by accepting the narrower scope, the applicant has disclaimed the difference and cannot recapture it by filing a continuation, even when the applicant points out the broader scope to the Examiner? That can’t be right.

  29. Dennis: What am I missing here? The Court seems to take law that says you cannot recapture in litigation claim scope disclaimed during prosecution, and apply it to activities during prosecution of a continuation application. Worse, the applicant explicitly pointed out the broader claim scope to the Examiner, so there can be no argument that the presumption that the Examiner properly examined the claims should be ignored. Worst, this opinion was by Newman, joined by Michel and Rader – not exactly a newbie group. Any insights on this? I’m not sure what any of us would do in this situation that the applicants did not do here.

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