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 proper test as to whether reissue claims are for the same invention as that disclosed as being the invention in the original patent 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 the disclosure was not sufficient because the new reissued claims were “merely suggested or indicated in the original specification” and the original specification was not sufficiently clear that the invention(s) claimed in the reissue application “constitute[d] parts or portions of the invention.” Antares Pharma, Inc., 771 F.3d at 1359, 112 USPQ2d at 1868 (quoting Corbin Cabinet Lock Co. v. Eagle Lock Co., 150 U.S. 38, 42-43 (1893)). In Antares Pharma, Inc., 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. Specifically, 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. Therefore, 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.
Examiners should review the reissue application to determine 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:
The original patent specification discloses that composition X is not suitable (or not satisfactory) for molding an item because composition X fails to provide quick drying. The patent issues with claims directed only to composition Y. After the patent issues, it is found that composition X would be desirable for the molding in spite of the failure to provide quick drying, because of some other newly recognized benefit from composition X. The addition of a claim to composition X or a method of use thereof would not be permitted in a reissue application, because the original patent specification contained an explicit statement of intent not to claim composition X or a method of use thereof.
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.
I. 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. 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.
II. 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.
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. 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. Recapture analysis would not need to be continued for claims drawn to overlooked aspects.
Note the following example illustrating the above:
Assume that, in the original prosecution of the patent, applicant claimed a method of making a glass lens, where the ion implantation step used a molten bath to diffuse ions into the lens, and that step was amended to recite a pressure of 50-60 PSI and temperature between 150-200 degrees C to define the invention over the art. The pressure and temperature range are surrender generating limitations for any molten bath ion implantation claim, and if such limitations are completely or substantially eliminated by reissue, recapture will bar such claims. See MPEP § 1412.02. However, if in the original application, applicant had failed to claim a disclosed embodiment to plasma ion implantation (i.e., using a plasma stream rather than a molten bath to provide the ions), that is a proper 35 U.S.C. 251 error, which can be corrected by reissue. Applicant can, in a reissue application, add a set of claims to plasma ion implantation, without including the “50-60 PSI and temperature between 150-200 degrees C” limitations. The “50-60 PSI and 150-200 degrees C” limitations are totally irrelevant to plasma implantation. Also, if in the original application, applicant failed to claim the method of placing two lenses made by the invention in a specified series to modulate a laser for cutting chocolate, that too is a proper 35 U.S.C. 251 error, which can be corrected by reissue. In this lens placement method, it does not matter how the specific lens having the implanted ion gradient was made, and the “50-60 PSI and temperature between 150-200 degrees C” limitations are again not relevant.
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 I above for more information.