Failure to overcome rejection in original prosecution estops argument in reexamination (Ex parte Smith)

In a decision which may greatly impact patentees who find themselves in reexamination, the BPAI held in Ex parte Smith that an Applicant in reexam was estopped from arguing a priority claim based on failure to overcome a written description rejection in the earlier prosecution of the issued patent. Specifically, during the original prosecution the Applicant chose to make a claim amendment to distinguish over a reference rather than to appeal the Examiner's finding that the claim didn't deserve priority to the parent. During reexamination, the Applicant did appeal on this very issue, and the BPAI held that "Appellant’s silence during the original prosecution creates an estoppel for the Appellant to deny the Examiner’s repeated priority findings thereby impliedly conceding their correctness."

You can find a full discussion of the decision here on the Patents Post Grant blog. Thanks to Scott McKeown of the Patents Post Grant blog for bringing this decision to my attention.