BPAI's "Administrative Estoppel": Untraversed PTO Findings May Be Barred in Later PTO Proceedings

Ex Parte Smith, Appeal No. 2009-014595 (BPAI, Aug. 17, 2010)

Smith filed a patent application in 1998 directed to a method and system for securing passwords and personal identification numbers.  In 2001 a continuation was filed, and later that year, a CIP was filed which ultimately issued as the '336 patent.

During prosecution of the '336 patent, the examiner did not give claims priority beyond the CIP date, ruling that the application did not give adequate support under 35. U.S.C. § 112 for certain terms.  Smith responded that the claims were supported, and provided arguments specific to one of the claims.  The other claims, and specific claim terms, were not addressed in the response.  The Examiner ultimately withdrew the originally rejected claim, but maintained the remaining rejections.

Smith filed an RCE, and the application was ultimately allowed.  In the Reasons of Allowance, the Examiner reiterated that the earlier applications failed to provide adequate support.

Roughly 4 years later, Smith filed a reexam on the '336 patent, and the Examiner rejected certain claims based on a reference ("Jules") that predated the CIP date, but was filed after the parent applications.  Smith attempted to remove Jules as valid prior art based the '336 patent's priority.  The BPAI refused to consider these arguments.

Filing a Board appeal does not, unto itself, entitle an appellant to de novo review of all aspects of a rejection. If an appellant fails to present arguments on a particular issue – or, more broadly, on a particular rejection – the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection. See, e.g., Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments appellant failed to make for a given ground of rejection as waived).

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An applicant’s statement to the examiner is a compelling disclaimer of scope such that a patent may not be entitled to an earlier priority date. . . . That is because arguments made to persuade an examiner to allow an application trump an ambiguous disclosure that otherwise might have sufficed to obtain an earlier priority date.

[D]uring the course of reexamination prosecution, the Examiner denied Appellant’s claim to benefit of priority to the [parent] patent, and found no support in the [parent] patent for each of the claims in the '336 patent that recite the term “graphical image.”  However, we find no need to make a determination as to whether the [parent] Patent provides support for the contested subject-matter during this reexamination, and instead find that Appellant is estopped from disqualifying Jules as intervening art since Appellant failed to traverse the Examiner’s findings regarding priority during the original prosecution of the '336 Patent and in fact did not raise any issues regarding benefit of priority to the [parent] patent in the Request for Ex Parte Reexamination by Patent Owner.

In making this determination, we find that during the original prosecution of the '336 patent, the Examiner made specific unambiguous priority findings during a First Office Action, a Final Office Action, and again in the Examiners Reasons for Allowance. In response to these priority findings, Appellant did not contest the findings other than to correct the Examiner’s apparent clerical error.  Thus, in overcoming the prior art during the prosecution of the '336 patent without attempting to traverse the Examiner’s priority findings, the Appellant forwent opportunities to persuade the Examiner that there may be support for the contested subject-matter in an ambiguous disclosure that otherwise might have sufficed to obtain an earlier priority date.

Further, while we realize that a patentee’s silence in the face of the Examiner’s Reasons for Allowance should not be treated as an acquiescence, we do find these facts compelling, and thus cannot be ignored when combined with the Appellant’s silence in the responses to formal office actions during the original prosecution. As a result, we find that it would be reasonable to infer from this that Appellant did not contest the Examiner’s priority findings, and indeed is not rightfully entitled to benefit from the [parent] patent’s earlier effective filing date for the claims presently at issue. Thus, we find that based upon Appellant’s silence and the prosecution history in toto, it would be reasonable for a competitor to believe that the applicant had disavowed priority  . . . based on the original Examiner’s priority findings.

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Hat Tip: the excellent Patents Post-Grant Blog