by Steve Driskill | Aug 23, 2013 | [sub] specification, Estoppel / Disclaimer
The lesson here is probably above all a cautionary tale about loose language. In its full context, it appears that the patentee was merely providing examples of conventional methods used for two-dimensional culturing and not intending to disclaim any particular method...
by Steve Driskill | Jul 31, 2013 | [sub] prosecution history, Estoppel / Disclaimer
For prosecution history estoppel to apply, the patentee must make a “clear and unmistakable” disavowal of claim scope. “The election of an invention in response to an ambiguous restriction requirement in turn cannot be said to provide any guidance forming a basis for...
by Steve Driskill | Jun 3, 2013 | [sub] prosecution history, Estoppel / Disclaimer
In general, a prosecution disclaimer will only apply to a subsequent patent if that patent contains the same claim limitation as its predecessor. “If the language of the later limitation is significantly different, the disclaimer will not apply.” This suggests that...
by Steve Driskill | Jun 3, 2013 | [sub] specification, Estoppel / Disclaimer
Limiting the definition of a claim term based on characterizations of the “invention” have no application where, as here, the other statements and illustrations make it clear that the limitations do not describe the invention as a whole. Nevertheless, it undoubtedly...
by Steve Driskill | Apr 16, 2013 | [sub] prosecution history, Estoppel / Disclaimer
It is well established that “it is the applicant, not the examiner who must give up or disclaim subject matter,” and generally remaining silent when confronted by statements made by the examiner during prosecution (e.g., reasons for allowance) is not sufficient to...
by Steve Driskill | Apr 15, 2013 | [sub] prosecution history, Estoppel / Disclaimer
Your arguments during prosecution should focus on (and mainly quote verbatim) the language of the claims, not the “invention” as a whole. Certainly, do not expressly characterize the “invention” as a whole with narrower terms than those used in the claims. Background...
