Broadening statements in the specification are generally insufficient to overcome a corresponding clear disavowal in the prosecution history. It may therefore be wise to cite to those statements during prosecution (e.g., to combat a written description rejection) before resorting to amendments.
Background / Facts: The patent being asserted here is directed to an electronic schedule system (i.e., an electronic program guide on a television screen) with access to both stored television schedule information and status information for live programs, such as sporting events and news stories, received through “data feeds.” The patent discloses that the providers of electronic program guide content can access information from a variety of sources, including the Internet, in order to populate those data feeds. During prosecution, however, amendments were made to “more particularly define the invention” by removing “Internet delivered data” in response to a written description rejection concerning whether the data feeds are actually delivered to the users via the Internet or are simply constructed from Internet-based information.
Issue(s): Whether the applicant’s amendments, removing “Internet delivered data” during prosecution in response to the examiner’s written description rejection, act as a clear disavowal of the data feed being delivered to the users via the Internet.
Holding(s): Yes. “The claims at issue here originally called for the data feed to be delivered via ‘Internet delivered data.’ However, the PTO examiner rejected claims incorporating that limitation under § 112, ¶1, reasoning that ‘nowhere in the specification mentions or hints that the information [in the data feed] is delivered to the users via Internet.’ … In response, [the patentee] amended the claims of the … patent to remove ‘Internet delivered data’ and to include references to a remote facility that receives Internet data and populates the data feed with that data.” The patentee “thus had to amend its claims to remove delivery via the Internet in order to secure its patent, and, as a result, clearly disavowed delivering data in data feeds via the Internet.” Although the court acknowledged statements in the specification that “[t]hose of skill in the art will understand that numerous other transmission schemes can be used to transmit the data stream,” it concluded that this was outweighed by the prosecution history disclaimer. “[A] vague statement such as that does not overcome the clear disavowal that occurred during prosecution.”