Docket No. 2010-1443
DYK, O’MALLEY(C), REYNA
March 5, 2012
Brief summary: As long as a broadening reissue application is timely filed, a continuing application therefrom including claims not related to the claims of the original patent or reissue application may properly be filed under 35 U.S.C. § 251 (In re Doll, CCPA 1970).
Summary: The FC considered whether the BPAI correctly determined that a broadening reissue application filed outside of the two-year period is not timely if it is not related to an earlier application filed within the two-year period. Staats’ patent (US 5,940,600) relating to data transfer systems issued in 1999 and a broadening reissue application was timely filed in 2001. RE RE38,641 E issued on Oct. 26, 2004 with new claims 12-17 directed to a process of a first disclosed embodiment and specifically reciting “a linked list of buffers.” On May 12, 2004, Staats filed a second broadening reissue application as a continuation of the first broadening reissue application that addressed errors directed to the same embodiment as the parent application. On Aug. 11, 2006, Staats filed a third broadening reissue application as a continuation of the second reissue application with claims directed to a second embodiment that had not been previously claimed. The BPAI held that the third application was improper because it broadened the “patented claims beyond the statutory two-year period in a manner unrelated to the broadening aspect that was identified within the two-year period” (citing In re Doll, CCPA 1970; 35 USC § 251; e.g., the first broadening reissue cannot serve as placeholder for later applications to unrelated subject matter due to public notice issues). However, the FC concluded that “Doll itself made no distinction between related and unrelated claims” and “simply held that section 251’s time limit clearly applied only to the filing date of the first broadening reissue application itself.” It therefore concluded that there is “no basis for limiting Doll to situations where later broadened claims are related to, or are directed to the same embodiment as in the original application.” Judge O’Malley concurred with the panel’s decision but not the method used to analyze the situation.