Unambiguously arguing that the claimed invention is allowable over certain prior art because the prior art fails to disclose a particular feature implies that this feature is a required part of the claimed invention, and is sufficient to satisfy the clear and unmistakable disavowal standard for prosecution disclaimer.
Background / Facts: The patent being asserted here relates to prepaid stored-value cards (e.g., gift cards) that may be purchased and used by consumers at point-of-sale terminals operated by third party retailers. In this regard, the claims recite “determining if the requesting terminal is authorized to request the requested transaction type for the stored value card,” and separately that each such point-of-sale terminal has “a unique terminal identifier.” The claims themselves do not expressly require using the recited “terminal identifier” for determining if the terminal is authorized to make the requested transaction, and at least some of the embodiments described in the specification provide authorization examples based on other information. However, during reexamination, the patentee overcame a rejection based on prior art that discloses a transaction request including a terminal identifier by arguing that the prior art nevertheless failed to disclose using the terminal identifier as a basis for determining if a terminal is authorized to perform the requested transaction.
Issue(s): Whether these arguments made during prosecution limit the asserted claims to require using the recited “terminal identifier” for determining if the terminal is authorized to make the requested transaction.
Holding(s): Yes. The patentee “expressly distinguished the claimed determining step by arguing that [the prior art] failed to disclose using the terminal identifier to determine if a terminal was authorized to make a requested transaction. … [Its] argument that [the prior art] did not render the claims obvious because it does not disclose use of the terminal identifier in the determination of terminal authorization was a disclaimer of claim scope.” The patentee’s “characterization [during litigation] of its statements as mere explanations of [the prior art’s] disclosure that did not address the scope of the asserted claims is without merit. [The patentee] unambiguously argued that [the prior art] fails to disclose the recited determining step, and the examiner expressly relied on those arguments to confirm the patentability of the asserted claims over [the prior art].”