Q) Tribell 10.03.16a

by patentbar on May 4, 2007 · 31 comments

in Exam Questions

(MPEP 1400, Broadening Reissue)

Question #16 from the October 2003 (AM) patent bar exam is in the Prometric database. Recent test takes have noted that the inventor, Tribell, is periodically swapped out with another name.

16. Tribell files a patent application for her aroma therapy kit on November 29, 1999, which issues as a patent August 7, 2001. She tries to market her kit but all her prospects are concerned that her patent claims are not sufficiently broad. On September 5, 2001, Tribell asks a registered practitioner for advice on what to do to improve her ability to market her aroma therapy kit. At the consultation the practitioner learns that in the original patent application, Tribell had a number of claims which were subjected to a restriction requirement, but were nonelected and withdrawn from further consideration. The practitioner also determines that the claims in the patent obtained by Tribell were narrower than the broader invention disclosed in the specification, and the cited references may not preclude patentability of the broader invention. Which of the following is the best course of action to pursue in accordance with the patent laws, rules and procedures as related to the MPEP?

(A) Tribell should file a reissue application under 35 USC 251 within two years of the issue of the patent, broadening the scope of the claims of the issued patent.

(B) Tribell should file a reissue application under 35 USC 251 any time during the period of enforceability of the patent to broaden the scope of the claims of the issued patent, and then file a divisional reissue application of the first reissue application on the nonelected claims that were subjected to a restriction requirement in the nonprovisional application which issued as a patent.

(C) Tribell should simultaneously file two separate reissue applications under 35 USC 251, one including an amendment of broadening the claims in the original patent, and the other including the nonelected claims that were subjected to a restriction in the nonprovisional application which issue as a patent.

(D) Tribell should immediately file a divisional application under 37 CFR 1.53(b) including the nonelected claims that were subjected to a restriction requirement in the original application.

(E) Tribell should immediately file a reissue application under 35 USC 251, including the nonelected claims that were subjected to a restriction requirement in the original application.

The answer is to file a reissue to broaden the claims. A divisional reissue cannot be filed because not claiming restricted claims is not an “error” that can be considered in a reissue application. See MPEP 1402, Grounds for Filing.

ANSWER: (A) is the most correct answer. 35 USC § 251, MPEP §1402 (5th paragraph). MPEP § 1402 states that one on the “most common bases for filing a reissue application [is] (A) the claims are too narrow or too broad.” The claims may be broadened in a reissue application filed by the inventor within two tears from the patent issue date. (B) is incorrect since the 4th paragraph of 35 USC §251 states that no reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent. (C) and (E) are incorrect. MPEP § 1402, sixteenth paragraph. An applicant’s failure to timely file a divisional application while the original application is still pending is not considered to be an error correctable via reissue. See In re Orita, 550 F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 1977). (D) is incorrect. MPEP § 201.06. IN order to claim benefit under 35 USC § 120 to a parent application, a divisional application must be filed while the parent patent application is still pending.

1 patentbarNo Gravatar December 18, 2007 at 12:31 am

Besides Tribell, test takers report another “broadening reissue question.”

Fact pattern: an oath stating non-broadening is filed before the two-year date and then inventors decide to broaden the patent, right on the two-year anniversary. BUT the inventors failed to use a Certificate of Mailing. Which statute should the examiner invoke, and should he consider it a broadening or non-broadening, when their broadening request came in non-timely?

1412.03 Broadening Reissue Claims […] Where any intent to broaden is indicated in the reissue application within the two years from the patent grant, a broadened claim can subsequently be presented in the reissue after the two year period. Thus, a broadened claim may be presented in a reissue application after the two years, even though the broadened claim presented after the two years is different than the broadened claim presented within the two years.

2 patentbarNo Gravatar August 7, 2008 at 3:17 pm

Beware a seemingly repeated long question on the prometric exam dealing with broadening reissue. A similar version of this question appeared in the Oct 2003 exam, and the two fact scenarios, both of which deal with timeliness of filing declaration for broadening reissue, are NOT the same. As always, READ the questions and answers carefully.

3 KeithNo Gravatar August 7, 2009 at 10:26 pm

Cna you broaden claims in a reexam too?

4 JoshNo Gravatar September 13, 2009 at 2:10 am

You can never broaden claims in a reexam. Only in a reissue.

5 CaseyNo Gravatar January 11, 2010 at 6:55 pm

So in this other broadening reissue question, the answer is that the examiner would not allow it because the request came in too late? Had the request been filed with a certificate of mailing (timely filed within 2 years) it would have been accepted?

6 StephenNo Gravatar August 12, 2010 at 9:39 pm

I would say yes. If the intent to broaden isn’t received within 2 years of the patent issue date then you can’t broaden. Since the certificate of mailing wasn’t timely received before the two years I believe it would not be eligible for broadening.

7 sethzNo Gravatar February 3, 2010 at 4:40 pm

The question is essentially the same as Iam Smarter’s cell phone in 2002 april pm #22.

8 mdavis68No Gravatar February 3, 2010 at 8:49 pm

* Patent Bar Exam – April 2002 PM – Question 22

22. Patentee, Iam Smarter, filed and prosecuted his own nonprovisional patent application on November 29, 1999, and received a patent for his novel cellular phone on June 5, 2001. He was very eager to market his invention and spent the summer meeting with potential licensees of his cellular phone patent. Throughout the summer of 2001, all of the potential licensees expressed concern that the claim coverage that Smarter obtained in his cellular phone patent was not broad enough to corner the market on this technology, and therefore indicated to him that they feel it was not lucrative enough to meet their financial aspirations. By the end of the summer, Smarter is discouraged. On September 5, 2001, Smarter consults with you to find out if there is anything he can do at this point to improve his ability to market his invention. At your consultation with Smarter, you learn the foregoing, and that in his original patent application, Smarter had a number of claims that were subjected to a restriction requirement, but were nonelected and withdrawn from further consideration. You also learn that Smarter has no currently pending application, that the specification discloses Smart’s invention more broadly than he ever claimed, and that the claims, in fact, are narrower than the supporting disclosure in the specification. Which of the following will be the best recommendation in accordance with proper USTPO practice and procedure?

(A) Smarter should immediately file a divisional application under 37 CFR 1.53(b) including the nonelected claims that were subjected to a restriction requirement in the nonprovisional application that issued as the patent.
(B) Smarter should file a reissue application under 35 U.S.C. § 251, including the nonelected claims that were subjected to the restriction requirement in the nonprovisional application that issued as the patent.
(C) Smarter should file a reissue application under 35 U.S.C. § 251, broadening the scope of the claims of the issued patent, and then file a divisional reissue application presenting only the nonelected claims that were subjected to a restriction requirement in the nonprovisional application which issued as the patent.
(D) Smarter should simultaneously file two separate reissue applications under 35 U.S.C. § 251, one including broadening amendments of the claims in the original patent, and one including the nonelected claims that were subjected to a restriction requirement in the nonprovisional application which issued as the patent.
(E) Smarter should file a reissue application under 35 U.S.C. § 251 on or before June 5, 2003, broadening the scope of the claims of the issued patent.

9 mdavis68No Gravatar February 3, 2010 at 8:50 pm

* Explanation:

(E) is the correct answer. 35 U.S.C. § 251. The reissue permits Smarter to broaden the claimed subject (A) is incorrect. There must be copendency between the divisional application and the original application. 35 U.S.C. § 120. (B) This is incorrect, as an applicant’s failure to timely file a divisional application while the original application is still pending is not considered to be an error correctable via reissue, In re Orita, 550 F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 1977). (C) This is incorrect, as an applicant’s failure to timely file a divisional application while the original application is still pending is not considered to be an error correctable via reissue, Id., including a divisional reissue application. MPEP § 1402. (D) This is incorrect, as an applicant’s failure to timely file a divisional application while the original application is still pending is not considered to be an error correctable via reissue, Id.

10 VeNo Gravatar January 27, 2011 at 9:49 pm

Got this one today

11 ELSNo Gravatar March 7, 2011 at 12:18 pm

Got the Tribell one yesterday.

12 InessaNo Gravatar March 7, 2011 at 6:08 pm

got this question today

13 OverworkkedNo Gravatar April 28, 2011 at 12:54 pm

VARIANT on 4/27/2011:

Patent has broad claim #1 AB, narrow claim #2 ABCD, wants to add intermediate claim #3 ABC. (Broader than 2, narrower than 1). Prior art that has been “submitted” (cant recall context) means that Claim #1 is probably invalid. Patent issued 3 years ago. What to do?

A.give up
B. reissue, file amendment to insert intermediary claim, cancel claim #1 (my answer)
C.*disclaim* claim #1, reissue, insert intermediary
D.do something
E. do both B & C

C probably fails b/c the disclaimer affects scope before you reissue. Key is to understand that broadening means broader than EVERY claim in the patent. See MPEP E8R8 1400.

14 PatrickNo Gravatar June 1, 2011 at 10:46 am

How can (B) be correct if the patent issued more than three years ago and you can’t file for a broadening reissue beyond two years from the date the patent issues? If the patent issued three years ago, this person appears to be out of luck (i.e., answer (A) give up)

15 ryanNo Gravatar June 1, 2011 at 1:05 pm

Like Overworkked stated, the key to this is understanding that broadening is in the context of every claim in the issued patent. Claim ABC will be narrower than Claim AB. This is permissible so long as you do not disclaim Claim AB prior to amending to add Claim ABC.

16 SolNo Gravatar April 2, 2012 at 6:13 pm

this twist on disclaimer is very trick. Then B is the only answer.

17 SolNo Gravatar April 2, 2012 at 6:16 pm

“A broadened reissue claim is a claim which enlarges the scope of the claims of the patent, i.e., a claim which is greater in scope than each and every claim of the original patent.”

“If a disclaimer is filed in the patent prior to the filing of a reissue application, the disclaimed claims are not part of the “original patent” under 35 U.S.C. 251.”

Be careful with disclaimer

18 RLNo Gravatar September 10, 2013 at 11:00 pm

Patrick is correct, (A) is the best answer. According to 1412.03:

The Court in Vectra Fitness Inc. v. TNWK Corp., 49 USPQ2d1144, 1147, 162 F.3d 1379, 1383 (Fed. Cir. 1998) held that a reissue application violated the statutory prohibition under 35 U.S.C. 251 against broadening the scope of the patent more than 2 years after its grant because the reissue claims are broader than the claims that remain after the disclaimer, even though the reissue claims are narrower than the claims that were disclaimed by the patenteebefore reissue. The reissue application was bounded by the claims remaining in the patent after a disclaimer is filed. A claim of a reissue application enlarges the scope of the claims of the patent if it is broader in at least one respect, even though it may be narrower in other respects.

19 AndrewNo Gravatar August 7, 2011 at 7:33 pm

Tricky, tricky.

20 RobbieNo Gravatar September 8, 2011 at 2:01 pm

To ryan’s comment on Overworkked’s variant question, if the applicant is wanting to submit claim ABC and he already has claim AB and ABCD, I understand that ABC would be narrower than AB, but it would be broader than ABCD, so if the applicant’s patent issued 3 years ago, wouldn’t that be a broadening reissue (from ABCD to ABC)? In which case he would still be out of luck because it’s past the 2 year mark…I’m with Patrick on this one.

Thoughts?

21 MaggieNo Gravatar October 31, 2011 at 1:06 pm

ABC-> ABCD is Broader than ABCD (b/c omitted item make claim broader)
AB –>ABC (could be broader or narrower depending on how C is written).

BUT, when one aspect of an application is broader then the whole application is considered “Broader” by the PTO even if there are additional narrowing changes as well.

Answer would be (A) Give up you are barred from broadening application

22 MaggieNo Gravatar October 31, 2011 at 1:09 pm

ABCD-> ABC is Broader (b/c the omitted item D makes the claim broader)
AB –>ABC (could be broader or narrower depending on how C is written).

BUT, when one aspect of an application is broader, then the whole application is considered “Broader” by the PTO even if there are additional narrowing changes as well.

Answer would be (A) Give up you are barred from broadening application (b/ca over two years)

23 maggieNo Gravatar October 31, 2011 at 7:16 pm

There is a kinda a similar Q on Exam Oct 2000AM Q #13:

24 MigNo Gravatar March 23, 2012 at 3:52 am

Answer is not A, it is B. Section 1412.03 clearly states that an amendment is broadening if it is broader in scope than each and every claim.

Maggie seems to be confusing the fact that broader in any sense makes the whole thing a broadening amendment even if it narrower in other senses. So if an amendment broadens one aspect of a claim more than any other claim in the original application it is considered a broadening amendment even if it narrower in every other aspect.

Merely being broader than a single claim does not make it a broadening amendment if there is at least one amendment in the original claim that is broader than the new claim.

25 SolNo Gravatar April 2, 2012 at 6:22 pm

“A claim of a reissue application enlarges the scope of the claims of the patent if it is broader in at least one respect, even though it may be narrower in other respects.”

“respect ” is not the same thing as “claim”

Basically compare the whole set of reissue claims to the whole set of orginal claims. If any respect is broader, it is a broadening reissue. Consier the “whole” not just one claim.

26 KforsytheNo Gravatar October 18, 2011 at 8:52 pm

I too would go with Patrick that the 2 year limit controls here on permitting reisssue. Anyone? Anyone? Bueller?

27 KforsytheNo Gravatar October 18, 2011 at 8:54 pm

I am still a little confused about when you can continue with a reissue after the 2 year mark. Am I correct that if you start the reissue withint 2 years, you can then add additional broadening materials after the 2 years because you have started the process within the 2 year reissue timeframe?

28 KFNo Gravatar November 2, 2011 at 2:54 pm

Ignore my comment above…it’s amazing how much I’ve learned in the last two weeks! You can request a reissue at anytime after the patent issues, but you can only request a reissue to broaden claims within teh 2 year mark. But you have to specifically state that you intend to broaden in your reissue before the 2 year mark.

29 MNGirlNo Gravatar March 20, 2012 at 12:23 am

got this question on 3/19/12. Went with A, do the reissue. Yay!

30 ZNo Gravatar March 31, 2013 at 1:53 pm

Got this 3/30/13.

31 Chris DNo Gravatar September 6, 2013 at 1:03 pm

I agree within Patrick, A. If AB was not allowed then it would be more broad then the allowed abcd. Thus, broadening would be improper

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