Prosecution Disclaimer 101: Argument relied upon by examiner results in prosecution disclaimer
The PTAB found the claims in question obvious for two reasons. First, in its primary ruling the PTAB held that there was no prosecution disclaimer, finding the “single entry” limitation of the claims to include text selection by a user, which was clearly within the prior art. The PTAB reasoned that claims these claims were not limited by the prosecution record, but to do this the PTAB had to ignore both the patent examiner’s Reasons for Allowance and the argument made by the applicant in the Remarks. Rather inexplicably, citing Sorensen v. Int’l Trade Comm’n, 427 F.3d 1375, 1379 (Fed. Cir. 2005), the PTAB ruled that it is up to the applicant to disclaim scope, not the examiner. But such a rationale simply ignored the facts on the record, namely that the reason the examiner explained the claims were allowed was precisely because of the argument made in the Remarks. Therefore, it was the applicant that specifically gave up that claim scope, as required to establish a prosecution disclaimer.