Q) ABCD/ABCDE/BCDE (10.03.2p)

by admin on April 3, 2010 · 13 comments

in Uncategorized

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.

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.

{ 13 comments… read them below or add one }

1 lanceNo Gravatar August 16, 2010 at 10:25 pm

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.

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2 studierNo Gravatar December 3, 2010 at 11:44 am

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.

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3 misspatentNo Gravatar April 2, 2011 at 3:33 pm

Express Mail was in fact in the question: “filed using the provisions of CFR 1.10” = Express Mail

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4 KillianRedNo Gravatar March 17, 2012 at 5:26 pm

Got this one 3/17/12

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5 SolNo Gravatar April 3, 2012 at 4:59 pm

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.

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6 PrometricEarphonesNo Gravatar April 17, 2012 at 5:34 pm

Got this question today.

Sol, I think your logic is right on point.

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7 PatentlyScrewedNo Gravatar November 21, 2012 at 7:32 pm

So here’s my understanding. You can broaden w/in 2 years regardless of a showing of intent, but you can do so after 2 years if you show intent before 2 years. I.e., “Where any intent to broaden is > unequivocally < 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. "

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8 nolifeNo Gravatar December 28, 2012 at 7:58 pm

Had this question on december 2012 test. Same fact pattern except the inventors mail using express mail on the 10th, 2days after the 2 yr window. Same answer choices

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9 ready2passNo Gravatar January 30, 2013 at 9:46 pm

nolife – in the question you received was the original patent granted on May 10, 2001? In other words was the reissue essentially broadened within the 2yr window? Oh no – I just re-read your question, so if the answer choices were the same, the answer to the question you received is (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

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10 mohamed nooraniNo Gravatar February 3, 2013 at 1:11 pm

That’s correct. Applicants representative filed an intent to narrow within two years but the actual broadening reissue was filed after two years.

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11 nolifeNo Gravatar February 3, 2013 at 1:14 pm

That’s correct. Applicants representative filed an intent to narrow within two years but the actual broadening reissue was filed after two years

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12 IlbeNo Gravatar February 5, 2013 at 10:50 pm

I see the May 8, 2003 amendment is ok because it falls on the 2-year anniversary.

But what if they filed the preliminary amendment after the 2-year anniversary (e.g. June 8, 2003)?
Is it still okay because the reissue was filed on April 11,2003?
Or is it not okay because they are trying to broaden the claim after 2-year anniversary although the reissue was actually filed before the 2-year anniversary?

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13 PayitforwardNo Gravatar March 7, 2014 at 11:58 pm

Had this verbatim.

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