Arguments concerning an amendment proposed during prosecution but not ultimately part of the issued claims do not rise to the level of prosecution history disclaimer. Here, for example, the patentee’s initial arguments and amendments clarifying that the claimed circumferential ridges were “continuous” in response to the examiner’s interpretation of the prior art were found to be inconsequential to later claim construction because the “continuous” limitation was removed prior to issuance in favor of other limitations forming the basis of the patent’s allowance. “Since the Examiner ultimately allowed the claims over the prior art without the proposed amendment, it is difficult to see how a skilled artisan could interpret the proposed amendment as a disclaimer required for patentability.” It may therefore be best to consider removing previously amended features that do not form the ultimate basis of allowance to avoid unnecessary limitations as well as any associated prosecution history disclaimer.
Background / Facts: The patent on appeal here from IPR proceedings at the PTO is directed to intraluminal stents that can be activated via an inflatable cuff. According to the claims, the inflatable cuff can be inflated by introduction of a fluid into at least one “circumferential ridge” disposed about the inflatable cuff. During the original prosecution, the examiner initially rejected the claims at issue by interpreting the prior art as having “inflatable protrusions” that form a “circumferential ridge.” In response to this rejection, the patentee stated that the prior art did not disclose “continuous” circumferential ridges and introduced an amendment adding the word “continuously” to the claim phrase “at least one circumferential ridge continuously disposed about said inflatable cuff.” Ultimately, however, the claims issued without expressly including the term “continuous” in the final issued claims.
Issue(s): Whether this series of events triggers prosecution history disclaimer that bars the patentee from now arguing for a construction that is limited to “continuous” circumferential ridges, which was not claimed in the final issued claims.
Holding(s): No. “Though [the patentee] offered the ‘continuously circumferential ridges’ limitation as one of several possible bases for distinguishing the prior art, the Examiner never adopted [the patentee’s] proposed amendment as a reason for allowing the claims over the prior art. Since the Examiner ultimately allowed the claims over the prior art without the proposed amendment, it is difficult to see how a skilled artisan could interpret the proposed amendment as a disclaimer required for patentability.”