CAFC: Examiner Reliance Not Required for Argument-Based Estoppel?

In Lifestream Diagnostics, Inc. v. Polymer Tech. Systems, Inc., 2004 U.S. App. LEXIS 18060 (Fed. Cir., August 25, 2004), Lifestream argued that a court may apply argument-based estoppel only if it may be reasonably inferred that the Patent Office relied on the arguments advanced by the patent applicant. In rejecting that argument, Judge Pros wrote that the applicant neither retracted any of his statements nor explicitly acquiesced to the rejection in the parent case by amending the the claims to include the missing element alleged to be present by the applicant, but not found by the Examiner:

"We agree with the district court that arguments deliberately and and repeatedly advanced by the by the patent applicant in regard to the scope of a claim during prosecution [in the parent application] may be used for purposes of claim construction [in the continuation-in-part application] even though the Patent Office rejected those arguments. . . . We hold that reliance by the Patent Office upon arguments mae by the patentee during prosecution is not necessary to find argument-based estoppel. . . ."

However, since the decision was issued as unpublished, it may not be cited as precedent under the Fed. Cir. R. 47.6(b):

(b) Nonprecedential Opinion or Order. An opinion or order which is designated as not to be cited as precedent is one determined by the panel issuing it as not adding significantly to the body of law. Any opinion or order so designated must not be employed or cited as precedent. This rule does not preclude assertion of claim preclusion, issue preclusion, judicial estoppel, law of the case, or the like based on a decision of the court designated as nonprecedential.