1412.01 Reissue Claims Must Be for Same General Invention [R-07.2022]

I. ORIGINAL PATENT REQUIREMENT

The reissue claims must be for the same invention as that disclosed as being the invention in the original patent, as required by 35 U.S.C. 251. The entire disclosure, not just the claim(s), is considered in determining what the patentee objectively intended as the invention. The determination of the original patent requirement is “an essentially factual inquiry confined to the objective intent manifested by the original patent.” In re Amos, 953 F.2d 613, 618, 21 USPQ2d 1271, 1274 (Fed. Cir. 1991) (quoting In re Rowand, 526 F.2d 558, 560, 187 USPQ 487, 489 (CCPA 1975)) (emphasis added); See also In re Mead, 581 F.2d 251, 256, 198 USPQ 412, 417 (CCPA 1978) (“Thus, in Rowand and similar cases, ‘intent to claim’ has little to do with ‘intent’ per se, but rather is analogous to the requirement of § 112, first paragraph, that the specification contain ‘a written description of the invention, and of the manner and process of making and using it.’”).

The “original patent” requirement of 35 U.S.C. 251 must be understood in light of In re Amos, supra, where the Court of Appeals for the Federal Circuit stated:

We conclude that, under both Mead and Rowand, a claim submitted in reissue may be rejected under the “original patent” clause if the original specification demonstrates, to one skilled in the art, an absence of disclosure sufficient to indicate that a patentee could have claimed the subject matter. Merely finding that the subject matter was “not originally claimed, not an object of the original patent, and not depicted in the drawing,” does not answer the essential inquiry under the “original patent” clause of § 251, which is whether one skilled in the art, reading the specification, would identify the subject matter of the new claims as invented and disclosed by the patentees. In short, the absence of an “intent,” even if objectively evident from the earlier claims, the drawings, or the original objects of the invention is simply not enough to establish that the new claims are not drawn to the invention disclosed in the original patent.

953 F.2d at 618-19, 21 USPQ2d at 1275.

Similarly, the disclosure requirement in Amos must be understood in light of Antares Pharma Inc., v. Medac Pharma Inc. and Medac GMBH, 771 F.3d 1354, 112 USPQ2d 1865 (Fed. Cir. 2014). In Antares Pharma, Inc., the court found “[n]owhere does the specification disclose, in an explicit and unequivocal manner, the particular combinations of safety features claimed on reissue, separate from the jet injection invention.” Antares Pharma, Inc., 771 F.3d at 1363, 112 USPQ2d at 1871. Specifically, the court stated “[a]lthough safety features were mentioned in the specification, they were never described separately from the jet injector, nor were the particular combinations of safety features claimed on reissue ever disclosed in the specification.” Antares Pharma, Inc., 771 F.3d at 1363, 112 USPQ2d at 1871. In other words, the court found that the patent only disclosed one invention, which was a particular class of jet injectors, due to the clearly repetitive use of “jet injector” in the title, the abstract, the summary of the invention, and the entirety of the specification of the patent. As a result, the claims in the reissue patent to the safety features on a generic injector (e.g., a non-jet injector) were held to violate the original patent requirement of 35 U.S.C. 251.

To satisfy the original patent requirement where a new invention is sought by reissue, “… the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares Pharma, Inc., 771 F.3d at 1363, 112 USPQ2d at 1871. Accordingly, claims drawn to an invention comprising a newly claimed combination of features that were only disclosed in the original patent as suggested alternatives (and not as a single combination) or only as part of the original invention and not as an invention separate from the original invention would not satisfy the original patent requirement. See also Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346, 1352, 2019 USPQ2d 221227 (Fed. Cir. 2019) (“nowhere do the written description or drawings disclose that arbors are an optional feature of the invention. Even if a person of ordinary skill in the art would understand that the newly claimed, arbor-less invention would be possible, that is insufficient to comply with the standard set forth in Industrial Chemicals [315 U.S. 668 (1942)] and Antares.”). “The ‘original patent’ standard and the written description requirement are not the same. Where the written description requirement is based on what the skilled artisan would have understood was within the possession of the inventor, recent Federal Circuit case law indicates that the original patent requirement under § 251 requires something more.” See Ex parte Sandwick, Appeal No. 2018-008369, op. at 22 (PTAB July 23, 2019) (Rejection under 35 U.S.C. 251 was affirmed because the patent did not describe any fabrication method other than casting. While one of ordinary skill in the art would have understood that other fabrication methods, such as injection molding or 3D printing, were possible or conventional, the reissue claims that did not include casting did not comply with the original patent requirement.)

Examiners should review the reissue application to determine whether the original patent requirement is satisfied, by considering if:

• (A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied;
• (B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application; and
• (C) the newly claimed invention is clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features.

Examiners should discuss any possible rejection under 35 U.S.C. 251 based on failure to meet the original patent requirement with their TQAS or SPRS.

The presence of the disclosure in the original patent should evidence that applicant intended to claim or that applicant considered the material now claimed to be the invention.

The original patent specification would indicate an intent not to claim the subject matter of the claims presented in the reissue application in a situation analogous to the following:

One should understand, however, that the mere failure to claim a disclosed embodiment in the original patent (absent an explicit statement in the original patent specification of unsuitability of the embodiment) would not be grounds for prohibiting a claim to that embodiment in the reissue.

II. FAILURE TO TIMELY FILE A CONTINUING APPLICATION PRIOR TO ISSUANCE OF ORIGINAL PATENT

Where a restriction (or an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a patent without filing a continuing application on the non-elected invention(s) or on non-claimed subject matter distinct from the elected invention, the non-elected invention(s) and non-claimed, distinct subject matter cannot be recovered by filing a reissue application. A reissue applicant’s failure to timely file a continuing application is not considered to be error causing a patent granted on the elected claims to be partially inoperative by reason of claiming less than the applicant had a right to claim. Accordingly, this is not correctable by reissue of the original patent under 35 U.S.C. 251. See In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990); In re Weiler, 790 F.2d 1576, 229 USPQ 673 (Fed. Cir. 1986); In re Orita, 550 F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 1977); see also In re Mead, 581 F.2d 251, 198 USPQ 412 (CCPA 1978). In this situation, the reissue claims should be rejected under 35 U.S.C. 251 for lack of any defect in the original patent and lack of any error in obtaining the original patent. In addition, amended reissue claims that clearly fall within the scope of the original non-elected claims should also be rejected under 35 U.S.C. 251. See Ex parte Sandwick, Appeal No. 2018-008369, op. at 25 (PTAB July 23, 2019) (“narrower reissue claims fall clearly within the scope of the broader original non-elected claims, and thus within the scope of the non-elected and restricted inventions that should have been properly pursued in a divisional application, whether claimed more broadly or more narrowly.”). Compare with In re Doyle, 293 F.3d 1355, 63 USPQ2d 1161 (Fed. Cir. 2002) where the court permitted the patentee to file a reissue application to present a so-called linking claim, a claim broad enough to read on or link the invention elected (and patented) together with the invention not elected. The non-elected invention(s) were inadvertently not filed as a divisional application.

III. OVERLOOKED ASPECTS

Claims to separate inventions/embodiments/species that were disclosed but never covered by the claims in the original application prosecution are claims to overlooked aspects. In other words, the reissue claims are drawn to a separate invention or separate species or embodiment that was not covered by a claim (e.g., a generic claim) at any point during the prosecution of the original application. For example, if all the claims were drawn to species A in the original application, reissue claims drawn to species B are considered claims to overlooked aspects, assuming that there was not a generic claim that covered both species A and B in the original application. Stated another way, an added limitation that “was within the scope of at least one original claim” cannot be an overlooked aspect. In re General Electric Co., 789 F. App’x 857, 861 (Fed. Cir. 2019) (unpublished) (“Because the original claims encompass the jet assembly subcombination, that subcombination is not an overlooked aspect of the invention.”)

Claims to overlooked aspects are not subject to recapture because the claims are, by definition, unrelated to subject matter that was surrendered during the prosecution of the original application. In the decision of In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012), the Federal Circuit explained:

Whereas the recapture rule applies when surrendered subject matter is being reclaimed, overlooked aspects by definition were never claimed and thus never surrendered. See Mostafazadeh, 643 F.3d at 1360 [98 USPQ2d at 1644]. Rather, as we explained in Mostafazadeh, “overlooked aspects” is a separate inquiry under reissue that is independent of whether or not the recapture rule applies.

679 F.3d at 1347, 102 USPQ2d at 1870.

The overlooked aspects inquiry is only applicable when an examiner determines that the broadening aspect(s) of that reissue claim relate(s) to subject matter that applicant previously surrendered during the prosecution of the original application (which became the patent to be reissued) in step 2 of the recapture analysis. See MPEP § 1412.02, subsection II.B. Recapture analysis would not need to be continued for claims drawn to overlooked aspects.

“Overlooked aspects, however, are not merely incidental features of the originally claimed invention. Rather, they are distinct elements which ‘were never claimed and thus never surrendered.’” Ex parte Yeo, Appeal No. 2020-001116, op. at 10-11 (PTAB March 2, 2020) (quoting Youman , 679 F.3d at 1347). In determining whether a reissue claim is drawn to overlooked aspects, the examiner must first determine if the claim meets the original patent requirement of 35 U.S.C. 251. “A reissue claim that does not meet the original patent (‘same invention’) requirement under § 251 cannot be an overlooked aspect of the invention because it is not directed to the disclosed invention of the patent. Therefore, as a first step, to determining whether reissue claim 6 is directed to an ‘overlooked aspect,’ we must determine whether reissue claim 6 meets the original patent (‘same invention’) requirement under § 251.” Yeo at 34. See subsection I above for guidance on the original patent requirement. In Yeo, the board found that reissue claim 6 did not meet the original patent requirement, and therefore, was not drawn to an overlooked aspect. Yeo at 34-41. For reissue claim 9, the board found the claim met the original patent requirement but was not drawn to an overlooked aspect because originally filed claim 1 covered the subject matter of reissue claim 9. Yeo at 41-43.

If the examiner determines that claims are drawn to overlooked aspects, the examiner should state which claims are drawn to overlooked aspects on the record.

Note the following example illustrating the above:

Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 1482-83, 46 USPQ2d 1641, 1649-50 (Fed. Cir. 1998), addressed this concept of overlooked aspects, stating:

[T]his principle [i.e., avoidance of the recapture rule], in appropriate cases, may operate to overcome the recapture rule when the reissue claims are materially narrower in other overlooked aspects of the invention.

142 F.3d at 1482-83, 46 USPQ2d at 1649-50.

See also B.E. Meyers & Co. v. United States, 47 Fed. Cl. 200, 56 USPQ2d 1110 (Fed. Cl. 2000), where the Court of Federal Claims permitted the complete removal of a limitation that was added to obtain the patent, where the replacement limitation provided a separate invention. In Meyers, the patented invention pertained to night vision devices. The original patent application, as filed, contained only claims that included a pulsing infrared Light Emitting Diode (LED). The broadening reissue application sought claims that did not include the pulsing LED. The Meyers court found that the reissued claims were to an independent invention that used a light source funneled through a lens system, which had nothing to do with any type of pulsing circuitry.

Even though claims drawn to overlooked aspects are not subject to recapture, the failure to present such claims may not be a proper error under 35 U.S.C. 251. Specifically, where a restriction (or an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a patent without filing a continuing application on the non-elected invention(s) or on non-claimed subject matter distinct from the elected invention, the non-elected invention(s) and non-claimed, distinct subject matter cannot be recovered by filing a reissue application. See subsection II above for more information.