BPAI: Reissue Not Available When Narrowing Contains All Original Patent Claims

Ex Parte Tanaka, Appeal No. 2009-000234 (BPAI, December 9, 2009) (Precedential)

When filing for a reissue,  there are two distinct statutory requirements that a reissue oath or declaration must satisfy under 35 U.S.C. § 251. First, it must state that the patent is wholly or partly inoperative or invalid because of defects in the specification or drawing, or because the patentee has claimed more or less than he is entitled to. Second, it must allege that the inoperative or invalid patent arose through error without deceptive intent.

In Tanaka, a reissue application was filed where the only amendment was the addition of a dependent claim ("claim 16").  The inventor filed a declaration stating that “the original patent is at least partially inoperative by reason of claiming more or less than [he] had a right to claim in the original patent,” and that the inventor "failed to recognize that the disclosed invention was not fully covered by the original claims."

The Examiner found that because the reissue application contained all of the original patent claims and adds by reissue application only a single dependent claim, the reissue declaration could not satisfy the error required under 35 U.S.C. § 251 because it could not properly allege that the patent is wholly or partly inoperative or invalid by reason of the patentee claiming more or less than he had a right to claim in the patent.

The BPAI affirmed the examiner:

[A]lthough § 251 should be construed liberally, it does not enable correction of every error . . . The only issue before us is whether the presentation of a narrower claim in a reissue application that still contains all of the original patent claims is an error correctible by reissue under 35 U.S.C. § 251 and 37 C.F.R. § 1.175(a)(1) . . . the defect in this situation is not the result of the patentee claiming more or less than he had a right to claim in the patent.

Precisely for this reason, the Appellant had difficulty in stating an error in the Substitute Reissue Declaration that would comply with 35 U.S.C. § 251 and 37 C.F.R. § 1.175(a)(1). In particular, the Appellant asserted generally that the original patent is partly inoperative by reason of claiming “more or less” than he had a right to claim in the patent. The Appellant’s mere reiteration of the statutory language “more or less” does not clearly identify the error to be corrected by reissue, because it does not indicate whether the patent is partly inoperative because the original claims are too broad in scope, or whether the patent is partly inoperative because the original claims are too narrow in scope.

Rather . . . the error presented by the present appeal appears to be based on the fact that the patentee included too few claims. The closest that the Appellant comes to asserting this error as the error upon which the reissue is based is in paragraph 3 of the Substitute Reissue Declaration, in which the Appellant asserts that he failed to recognize that the disclosed invention was not “fully covered by the original claims."

This statement, however, is inaccurate, because the original claims, which are drafted using the open-ended “comprising” language, would cover the invention as now presented in claim 16. It is only if the Appellant were to assert that claim 1 is overly broad or otherwise inoperative or invalid that the original claims may not fully cover the invention now presented in reissue claim 16. The Appellant, however, nowhere asserts in the Substitute Reissue Declaration that the patent is partly inoperative by reason of the patentee claiming more (i.e., by broadly reciting the invention in claim 1) than he had a right to claim in the patent. The Appellant also does not attempt in this reissue application to add narrowing language to claim 1 or to cancel claim 1 as being overly broad.

Considering the vague language used in the Substitute Reissue Declaration to describe the error being corrected by reissue, the only conclusion we can reach from a review of the reissue claims on appeal is that the patentee is seeking an additional claim (i.e., claim 16) in order to hedge against the possible invalidity of one or more of the original claims. The Appellant attempts to have it both ways, by seeking to add narrower claims to the original patent without complying with the requirements of [the statute].

AFFIRMED

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