Ex parte Adams

Informative decision only: persuasive authority, not binding precedent. When a reissue is filed more than two years after grant and the original patent claim is indefinite because it contains contradictory limitations (an element both parallel and orthogonal to another), the Board may treat the indefinite patent claim as having no scope, because no structure could anticipate or infringe it. A reissue claim that is definite and reads on structure the patent claim did not cover therefore enlarges the claim scope contrary to the fourth paragraph of 35 U.S.C. § 251 ("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."), and the Board will affirm the rejection. No prior precedent directly addressed this issue; the Board called it an issue of first impression: whether an indefinite claim has any scope for § 251 enlargement purposes. It rejects the Examiner's position that indefinite claims must be given the broadest possible scope by interpreting them as best as possible, finding that Steele and Wilson foreclose that approach. For an examiner, the decision supports a § 251 fourth-paragraph enlargement rejection of a late-filed reissue that cures an indefinite claim, since the corrected claim is broader than a claim with no scope. For a patent owner or appellant, a reissue fixing an indefinite claim after the two-year window is risky, and equity did not help where the applicant ignored an express warning in an Examiner's Amendment and failed to check the issued patent. The Board relied on binding CCPA and Federal Circuit authority, including In re Steele, In re Wilson, In re Rogoff, In re Ruth, and Tillotson, Ltd. v. Walbro Corp., and on MBO Laboratories v. Becton, Dickinson for the limited remedial function of § 251. LEGAL TEST OR STANDARD: The issue was whether reissue claim 1 enlarges the scope of patent claim 1. The Board determined the scope, if any, of the patent claim and compared it to the reissue claim. A claim is enlarged if it is so changed as to bring within its scope any structure not within the scope of the original patent claims, i.e., if it is broader in any respect than the original claim, even if narrower in other respects. An indefinite claim cannot be compared to prior art, and the Board asked whether any device could anticipate or infringe it. TRIGGERING FACTS: The reissue was filed 24 May 2002 for a patent issued 17 May 1994, more than two years after grant. Patent claim 1 contained an Examiner's Amendment reciting that the trough and slanted surfaces were substantially parallel and substantially orthogonal to the flat parallel sides. Both applicant and examiner agreed the claim was indefinite, and no device could meet it. Reissue claim 1 was definite and read on the structure of Figs. 1 and 2. The applicant did not file a 37 C.F.R. 1.312 amendment despite an express warning in the Office action. KEY QUOTE: "We are unable on this record to come up with any device which would anticipate or infringe patent claim 1." (p. 11) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board followed In re Steele, 305 F.2d 859 (CCPA 1962) and In re Wilson, 424 F.2d 1382 (CCPA 1970) as foreclosing broadest-possible-scope treatment of indefinite claims, and followed In re Rogoff, 261 F.2d 601 (CCPA 1958), In re Ruth, 278 F.2d 729 (CCPA 1960), and Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033 (Fed. Cir. 1987) on enlargement. PRACTICE TIP: Review every Examiner's Amendment and the issued patent promptly, file any 37 C.F.R. 1.312 amendment or certificate of correction before the issue fee or soon after issuance, and file any reissue to cure an indefinite claim within two years of grant, because later the corrected claim may be held to enlarge scope.