In prosecution, if a patent attorney does not try to remove prior art cited by an examiner (eg a 130 affidavit to assert an exception under102(b)(1)(A)), but instead makes arguments to overcome the art, may the attorney made an admission that bars removing the art later in prosecution. Just received such a transfer case, looking for options.

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Haven't looked it up, but I would think an admission wouldn't be an issue for an actual bar here. i.e., it might be an admission if you fail to argue that something is non analogous art, but if something is objectively not prior art, an admission wouldn't make a difference.

My first step would be to call the Examiner, tell him that this isn't prior art for the following reason, what do you want in my affidavit? Wouldn't even mention the previous arguments.

Downside is that there are already unnecessary arguments in the record that narrow your claims.

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FYI, my answer for issues like this is almost always call the Examiner. They usually won't know the answer, but it doesn't matter because you get to write in your response that "as discussed in the Examiner Interview of XXX, we are submitting herewith . . ."

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As long as prosecution is still open, you can argue that a reference is not prior art and provide the affidavit. Of course, this should always be been done in the first place to avoid having to put any arguments on the record that can be used against the patent owner in litigation.

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