Appeal 2007-0914
Application 09/904,734
are binding on the patentee for purposes of a later inquiry into
obviousness. See Constant v. Advanced Micro-Devices, Inc.,
848 F.2d 1560, 1570 (Fed.Cir.1988) (“A statement in the patent
that something is in the prior art is binding on the applicant and
patentee for determinations of anticipation and obviousness.”);
Sjolund v. Musland, 847 F.2d 1573, 1577-79 (Fed.Cir.1988)
(patent specification admitted that certain matter was prior art,
and thus “the jury was not free to disregard [that matter]” and
“must have accepted [it] as prior art, as a matter of law”); In re
Fout, 675 F.2d 297, 300 (CCPA 1982); In re Nomiya, 509 F.2d
566, 571 (CCPA 1975).
Nor is there any unfairness in holding the inventors to the
consequences of their admissions, as their characterization of
the prior art as showing the presence of stem cells in cord blood
is hardly unreasonable.
PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1362, 83
USPQ2d 1289, 1303 (Fed. Cir. 2007).
Also, in an unpublished and non-precedential opinion, the
Court of Appeals held that an inventor's admissions supported
findings that claims were unpatentable as being obvious to one having
ordinary skill in the art. See In re Constant, 10 Fed. Appx. 898, 899
(Fed. Cir. 2001), 2001 WL 502031.
Appellants have not presented any arguments directed separately to
the patentability of dependent claims 3-5, 7-9, 13, 14, 18-20 and 22-24.
Appellants have also failed to present any arguments directed to the second
and third stated rejections of dependent claims 2, 6, 10, 11, 15, 17, 21 and
25-27. In the absence of separate arguments with respect to these dependent
claims, those claims fall with their respective independent claim. See In re
Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991). See
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