ANSWER: (D) is the most correct answer. MPEP §§ 1403 and 1412.03, under the heading “When A Broadened Claim Can Be Presented.” A broadening reissue claim must be filed within the two years from the grant of the original patent. (D) is the most correct and the examiner should examine the case as any other application and address appropriate issues concerning reissue examination. See Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964) (a similar rule in interferences). Since applicant filed the amendment by Express Mail, the amendment is treated as being filed with the USPTO on the date of deposit with the US Postal Service. Therefore, (A), (B) and (C) are incorrect answers. A reissue application can be granted a filing date without an oath or declaration, or without the filing fee being present. See 37 CFR § 1.53(f). Applicant will be given a period of time to provide the missing parts and to pay the surcharge under 37 CFR § 1.16(e). See MPEP § 1410.01. Choice (E) is not correct since the mere deletion of an element of a claim does not automatically raise a ground of rejection based on the recapture doctrine. See MPEP § 1412.02.
Q) ABCD/ABCDE/BCDE (10.03.2p)
Recent takers report that question #6 from the October 2003 (PM) test is in the Prometric database.
2. A U.S. patent was granted on May 8, 2001. The sole independent claim in the patent isdirected to a combination of elements ABCD. A registered practitioner filed a reissueapplication on April 11, 2003 to narrow sole independent claim. In the reissue application, theindependent claim is amended to a combination to elements ABCDE. The reissue application isaccompanied by a transmittal letter stating that the application was filed to narrow a claim, thatall inventors could not be located to sign the reissue oath or declaration at that time, and that adeclaration would be submitted in due course. No other amendments to the claims were filed onApril 11, 2003. On May 8, 2003, a declaration signed by all inventors is filed declaring that theyhad claimed less than they had a right to claim, and that the error arose without deceptive intent.The inventors also filed on May 8, 2003 a preliminary amendment deleting element A from thesole independent claim leaving elements BCDE. The amendment and declaration are filed usingthe provisions of 37 CFR 1.10. The practitioner included an authorization to charge thepractitioner’s deposit account for any necessary fees. Which of the following actions by theprimary the examiner in the first Office action is in accordance with the patent laws, rules andprocedures as related in the MPEP?(A) Reject all the claims based upon a broadening reissue outside the two yearstatutory period authorized by 35 USC 251 since applicant did not file abroadened reissue claim at the time of filing.(B) Reject all the claims based upon a broadening reissue outside the two yearstatutory period authorized by 35 USC 251 since applicant did not file a claim to abroadened reissue claim within the two year period set by 35 USC 251.(C) Reject all the claims based upon a broadening reissue outside the two yearstatutory period authorized by 35 USC 251 since applicant’s indication in thetransmittal letter indicated that the filing of the reissue application was anarrowing reissue and that the broadening amendment was not permissible even iffiled within the two-years from the grant of the original patent.(D) Determine that the application is a proper broadening reissue and perform anexamination and issue an Office action in due course.(E) Determine that the application is a proper broadening reissue and reject the claimsunder the recapture doctrine since the claims are broader than the issued claims.
{ 6 comments… read them below or add one }
Answer says: “Since applicant filed the amendment by Express Mail, the amendment is treated as being filed with the USPTO on the date of deposit with the US Postal Service.”
The question didn’t specify that the applicant filed by express mail…are we always supposed to assume that they do? I’m not understanding why there are so many of these ticking time-bomb questions on the exam. Always seems as if the applicant waits until the extreme last second to do something, and then the question is focused on the date that an opportunity on a particular action expires.
Ha. That is how they test the deadlines.
Also, don’t assume that everything is filed by Express Mail. I think the answer is just assuming stuff that wasn’t in the questions. However, knowing that isn’t necessary to answer the question because the question said the “The inventors also filed on May 8, 2003 a preliminary amendment deleting element A . . .”. If the problem tells you when it is filed, that is when it is filed.
Express Mail was in fact in the question: “filed using the provisions of CFR 1.10″ = Express Mail
Got this one 3/17/12
I dislike this question. Hope my following understanding is correct
Facts:
Pat granted on May 8, 2001 claim ABCD
Reissue filed on April 11, 2003
no oath/dec
amendment narrowing claims to ABCDE
transmittal paper showing intent of narrowing
Oath/dec submitted on May 8, 2003
amendment broadening claims to BCDE
oath/dec showing intent of broadening
*since they used express mail, the date is May 8, 2003 within two years. So B is factually wrong. However, even the broadening claims are present after two years, it is still OK IF a broadening intent is presented within two years. See 3 below.
Take home messages:
1. The reissue got a filing date April 11, since oath/dec, fee can be submitted later. not tested here.
2. The first intent of narrowing in the transmitall paper does not have any negative impact as long as a broadening intent is submitted in oath/dec within two years. so C is wrong.
3. A broadening claims is not required at the time of filing. Or even can be outside of two years, as long as the inent of broadening is presented within two years.
Got this question today.
Sol, I think your logic is right on point.