Ex Parte Staats et al

Board of Patent Appeals and Interferences

Apr 26, 2010

11503541 (B.P.A.I. Apr. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERIK STAATS and ROBIN D. LASH
____________

Appeal 2009-0071621
Application 11/503,541
Technology Center 2100
____________

Decided: April 26, 2010
____________

Before MICHAEL R. FLEMING, Chief Administrative Patent Judge, and
JAMES T. MOORE and ALLEN R. MacDONALD, Vice Chief
Administrative Patent Judges, FRED E. McKELVEY, Senior Administrative
Patent Judge, and JOHN A. JEFFERY, Administrative Patent Judge.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the Examiner’s
rejection of claims 1-4 and 8-32. 2 We have jurisdiction under 35 U.S.C. §
6(b) (2008). We affirm.

1 Appeal No. 2009-006496 (Appl’n 10/669,119) is related to this appeal.
See App. Br. 1.

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STATEMENT OF THE CASE
The reissue application on appeal seeks a third reissue of U.S. Patent
5,940,600 (“the ‘600 patent”). As set out in more detail in our Findings of
Fact, two earlier reissue patents have already issued.
Oral argument on the appeal was heard on July 8, 2009, before a panel
consisting of Judges MacDonald, McKelvey and Jeffery. Upon
consideration of the appeal, the Chief Judge expanded the panel to the
current panel. Appellants were invited to present additional oral argument,3
but did not respond to the order. Since the time period for responding to the
order has lapsed, we therefore decide this appeal without an additional
hearing.
Appellants invented a method for establishing an isochronous channel
within a computer system between a subset of plural nodes associated with
various interconnected components (e.g., a video camera, VCR, printer,
etc.). Figure 1 of the ‘600 patent illustrates the computer system of the
present invention with these nodes. Figure 1 is reproduced below:

2 Original patent claims 5-7 were cancelled. See “Amendment A” dated
June 11, 2007.

3 See Order mailed Aug. 13, 2009 (giving Appellants the opportunity to
request another oral hearing within seven days).

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Figure 1 of the ‘600 Patent Illustrating a Computer System and Nodes

In one embodiment, the isochronous data channel includes a linked
list of buffers that are used as temporary storage locations for data
transmitted on the isochronous data channel. In another embodiment, the
isochronous channel is established in which sender and listener clients are
added by device drivers.4 Claim 12 is illustrative:

12. A method comprising:

establishing an isochronous channel within a computer
system to receive isochronous data transmitted from a first
device driver to a second device driver;

4 See generally ‘600 Patent, Abstract; col. 8, l. 34 − col. 10, l. 52; Figs. 1 and
4.

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by the first device driver, adding a sender client
configured to transmit the isochronous data to the isochronous
channel and providing the sender client with a channel
identifier;

passing a reference to the channel identifier from the first
device driver to the second device driver; and

by the second device driver, adding a listener client to the
isochronous channel by providing the listener client with the
channel identifier.

1. The Examiner rejected claims 1-4 and 8-32 under 35 U.S.C. § 251 as
being based upon a defective reissue declaration.5 Ans. 3.6
2. The Examiner rejected claims 12-32 under 35 U.S.C. § 251 as being
broadened in a reissue application filed outside the two-year statutory
period. Ans. 3-6.

THE REJECTION OF CLAIMS 1-4 AND 8-32 UNDER § 251
Appellants did not present any arguments pertaining to the
Examiner’s rejection of claims 1-4 and 8-32 under 35 U.S.C. § 251 as being

5 Original patent claims 1-5, 8, and 9 were amended during this proceeding.
See “Amendment A” dated June 11, 2007.

6 Throughout this opinion, we refer to (1) the Appeal Brief filed June 17,
2008; (2) the Examiner’s Answer mailed August 13, 2008; (3) the Reply
Brief filed October 15, 2008; (4) the Supplemental Examiner’s Answer
mailed December 17, 2008 (“Supp. Ans.”); and (5) the Reply Brief to the
Supplemental Examiner’s Answer filed February 16, 2009 (“Supp. Reply
Br.”).

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based upon a defective reissue declaration. Ans. 3; App. Br. 9; see also
Reply Br. 1-4. Accordingly, we summarily sustain this rejection.7

THE REJECTION OF CLAIMS 12-32 UNDER § 251
The Examiner found that the present reissue application
impermissibly broadens the patented claims beyond two years from the
original patent’s issuance. The Examiner assumed that the present
application is a proper continuation application of the originally-filed reissue
application (09/932,846) (“the first reissue application”). Moreover, the
Examiner found that Appellants indicated an intent to broaden the patented
claims within two years. Ans. 3-6.
Nevertheless, the Examiner concluded that the present reissue
application seeks to broaden the claims in an entirely different manner that is
not covered by the declaration filed in the first reissue application.
According to the Examiner, the public would therefore not have been
notified of the unrelated broadening in this application within the statutory
two-year time period. Ans. 3-14; Supp. Ans. 3-5.
Appellants acknowledge that the two continuation reissue applications
(including the present application) were filed “to broaden the claims in
different ways.” App. Br. 5. And while Appellants acknowledge that they
must present an intent to broaden within the two-year period to comply with
the reissue statute, Appellants nonetheless contend that the eventual scope of

7 See, e.g., Manual of Patent Examining Procedure (MPEP) § 1205.02, 8th
ed., Rev. 7, July 2008 (“If a ground of rejection stated by the examiner is not
addressed in the appellant’s brief, that ground of rejection will be summarily
sustained by the Board.”).

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broadening need not be specified within this time period. Id. According to
Appellants, so long as the public is notified of any intent to broaden within
two years, it is unnecessary to notify the public of the specific scope of
broadening within that time period. App. Br. 5-7; Reply Br. 3-4.
The issue before us, then, is as follows:

ISSUE
Have Appellants shown that the Examiner erred in rejecting claims
12-32 under § 251 as impermissibly broadening the patented claims via
reissue outside the two-year statutory period?
This issue turns on whether a continuing reissue application can
broaden patented claims beyond the two-year statutory period in a manner
unrelated to the broadening aspect that was identified within the two-year
period.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
Original Patent
1. U.S. Patent 5,940,600 (“the original patent”) issued August 17,
1999.
2. In Figure 4, Appellants’ original patent discloses a conditional
branching scheme for a linked list of buffers containing pointers that point to
certain buffer addresses according to a buffer condition field in each buffer.
‘600 Patent, col. 2, ll. 57-58; col. 8, l. 33 − col. 9, l. 55; Fig. 4. This
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embodiment involving a linked list of buffers supporting conditional
branching is shown in Figure 4 reproduced below:

Figure 4 of the ‘600 Patent Showing a Linked List of Buffers Supporting
Conditional Branching

3. Appellants’ original patent discloses other embodiments where the
CPU 10 can establish the isochronous channel without becoming part of the
channel. For example, a channel can be established between only video
camera 32 and VCR 36, and first and second drivers can be associated with
the camera and VCR, respectively. In this embodiment, the camera driver
would (1) establish the channel ID and add the camera as a sender client;
(2) call the VCR driver; and (3) pass a reference to the channel ID. The
VCR driver would then add the VCR as a listener client. ‘600 Patent, col. 9,
l. 56 − col. 10, l. 52.

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4. In this alternative embodiment, no linked list of buffers is required
since the VCR can record video data directly. Isochronous data (i.e., video
data) is transmitted from camera 32 to the VCR 36 without interrupting the
CPU 10 (which is not a client of the isochronous channel). ‘600 Patent, col.
10, ll. 44-49.
4A. Claims 1-11 of the original patent all recite, in pertinent part, “a
linked list of buffers configured to receive isochronous data transmitted
within [the] computer system.” ‘600 Patent, col. 11, l. 5 − col. 12, l. 32
(independent claims 1, 8, and 9).

First Reissue Application
5. A first reissue application 09/932,846 was filed August 17, 2001
(“the first reissue application”) along with a preliminary amendment
adding claims 12-17 directed to a computer readable medium and computer
implemented process. These claims recited, among other things:
(1) a linked list of buffers where each buffer comprises a data field for
storing isochronous data;
(2) a condition field for storing condition data;
(3) first and second pointer fields for storing first and second pointers,
respectively; and
(4) evaluating the condition data in each buffer and using the first or
second pointer to access a buffer.
Prelim. Amd’t Accompanying First Reissue Appl’n, filed Aug. 17, 2001.
6. A first declaration submitted in the first reissue application on
August 17, 2001 [on the two-year anniversary of the patent] identified at
least one error upon which the reissue was based as follows:
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This is a broadening reissue to remove limitations in the claims
as issued, by which limitations the patentee claimed less than it
had the right to claim in the patent.

First Reissue Appl’n, Decl. filed Aug. 17, 2001.
7. Appellants’ remarks accompanying the preliminary amendment
filed in the first reissue application indicate that “[c]laims 12-17 are
supported in the patent disclosure, for example, at column 8, line 33 through
column 9, line 55 and Figure 4.” Remarks Accompanying First Reissue
Appl’n, filed Aug. 17, 2001.
8. On February 19, 2002 [after the two-year anniversary of the
patent], a second declaration was filed in the first reissue application
identifying at least one error upon which the reissue was based as follows:
The failure to claim or to further claim subject matter disclosed
in the specification pertaining to handling real time data
transmitted on an isochronous channel within a computer
system.

First Reissue Appl’n, Decl. filed Feb. 19, 2002.
9. On December 20, 2002, the Examiner rejected claims 1-17 in the
first reissue application due to the reissue declaration’s failure to specifically
identify the error to be corrected. First Reissue Appl’n, Non-Final Rej.
mailed Dec. 20, 2002, at 2-3.
10. On April 15, 2003, Appellants filed a third declaration in the first
reissue application identifying at least one error upon which the reissue was
based as follows:
The failure to claim or to further claim subject matter disclosed
in the specification pertaining to a method for handling data
transmitted on an isochronous channel using a linked list of
buffers that includes the use of a condition field in each buffer.
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First Reissue Appl’n, Decl. filed Apr. 15, 2003.
11. Based on the first reissue application, a first reissue of the original
patent issued as US RE38,641 E on October 26, 2004.

Second Reissue Application
12. A second continuation reissue application 10/845,060 was filed
May 12, 2004 (“the second reissue application”). This application was
filed with claims identical to claims 1-11 of the ‘600 patent. See Second
Reissue Appl’n, Claims filed May 12, 2004.
13. On May 12, 2004, the second reissue application was filed with a
first declaration identifying at least one error upon which the reissue was
based as follows:
The failure to claim or to further claim subject matter disclosed
in the specification pertaining to a method for handling data
transmitted on an isochronous channel using a linked list of
buffers that includes the use of a condition field in each buffer.

Second Reissue Appl’n, Decl. filed May 12, 2004.
14. On November 19, 2004, the Examiner rejected claims 1-11 in the
second reissue application due to a defective declaration since the identified
error had already been corrected. Second Reissue Appl’n, Non-Final Rej.
mailed Nov. 19, 2004 at 2.
15. In the same office action, the Examiner also rejected claims 1-6
and 8-11 under § 102 over a prior art reference, and noted that since
“applicant has filed the same original claims in this application as in the
parent, the art rejection from the parent case is repeated here.” Second
Reissue Appl’n, Non-Final Rej. mailed Nov. 19, 2004 at 2.
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16. On July 5, 2005, Appellants filed an amendment that (1)
amending claims 1 and 7-9, and (2) adding claims 12-18. Second Reissue
Appl’n, Amd’t filed July 5, 2005.
17. On July 5, 2005, Appellants filed a second declaration in the
second reissue application identifying at least one error upon which the
reissue was based as follows:
At least one error being relied upon as the basis for reissue is
the inclusion of limitations pertaining to the sender client and/or
the listener client “being a software driver routine” in claim 1.
At least one further error being relied on as the basis for reissue
is the inclusion of limitations pertaining to the sender client
and/or the listener client “being a software driver routine” in
claim 9.

Second Reissue Appl’n, Decl. filed July 5, 2005, at 1.
18. On August 19, 2005, the Examiner allowed claims 1-7 and 12-17.
The Examiner, however, rejected claims 8-11 and 18 as unpatentable under
the judicially-created doctrine of obviousness-type double patenting over
claims 8-11 and 17 of U.S. Patent No. RE 38,641 E which was said to
contain every element of the application claims. Second Reissue Appl’n,
Final Rej. mailed Aug. 19, 2005 at 2-3.
19. The Examiner’s reasons for allowance noted that “claims 1 and
13 include the limitations of each buffer comprising a data field and a
condition field and the condition data in the condition field being evaluated
to determine a next buffer from which to access isochronous data. The other
independent claims also include these or similar limitations.” Second
Reissue Appl’n, Final Rej. mailed Aug. 19, 2005, at 3.
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20. Appellants later filed a terminal disclaimer to overcome the
double-patenting rejection. Second Reissue Appl’n, Terminal Disclaimer
filed Oct. 21, 2005.
21. The Examiner subsequently allowed the application. Second
Reissue Appl’n, Notice of Allowability mailed Jan. 29, 2007.
22. Based on the second reissue application, a second reissue of the
original patent issued as US RE39,763 E on August 7, 2007.

Third Reissue Application (The Application on Appeal)
23. A third reissue application 11/503,541 (the application on appeal)
was filed August 11, 2006 (“the present reissue application”). The third
reissue application is said to be a continuation of the second reissue
application.
24. The present reissue application was filed with claims identical to
claims 1-11 of the ‘600 patent. See Present Reissue Appl’n, Claims filed
Aug. 11, 2006.
25. On August 11, 2006, the present reissue application was filed
with a first declaration identifying at least one error upon which the reissue
was based as follows:
The failure to claim or to further claim subject matter disclosed
in the specification pertaining to a method for handling data
transmitted on an isochronous channel using a linked list of
buffers that includes the use of a condition field in each buffer.

Present Reissue Appl’n, Decl. filed Aug. 11, 2006.

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26. On December 8, 2006, the Examiner rejected claims 1-11 in the
present reissue application due to a defective declaration since the identified
error had already been corrected. Present Reissue Appl’n, Non-Final Rej.
mailed Dec. 8, 2006, at 2.
27. On June 11, 2007, Appellants filed an amendment (1) amending
claims 1, 8, and 9; (2) cancelling claims 5-7; and (3) adding claims 12-32.
Present Reissue Appl’n, Amd’t filed June 11, 2007.
28. Newly-added claims 12-32 call for, in pertinent part, an
isochronous channel in which the sender and listener clients are added by
device drivers. See Present Reissue Appl’n, Amd’t filed June 11, 2007
(claims 12-32).
29. On June 11, 2007, Appellants filed a second declaration in the
present reissue application identifying at least one error upon which the
reissue was based as follows:
This is a broadening reissue to obtain claims that do not require
all of the limitations of the claims as issued, by which
limitations the patentee claimed less than it had the right to
claim in the patent.

At least one error being relied upon as the basis for reissue is
the lack of any claims directed to an alternative embodiment of
the invention for establishing an isochronous channel in which
the sender and listener clients are added by device drivers. This
error is being corrected by including new claims 12-32. . . .

The second declaration also identified additional limitations of claims 1, 8,
and 9 that were not included in the issued claims and proposed to correct
these errors by amending these claims. Present Reissue Appl’n, Decl. filed
June 11, 2007, at 2.
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30. On November 7, 2007, the Examiner rejected claims 12-32 under
35 U.S.C. § 251 as impermissibly broadening the original patent claims
outside the two-year statutory period. According to the Examiner, newly-
added independent claims 12, 20, and 27 are broader than the original patent
claims since they omit limitations calling for the listener client being a
software driver routine associated with sender and listener nodes of the
computer system, respectively. Present Reissue Appl’n, Final Rej. mailed
Nov. 7, 2007, at 2.
31. Appellants appealed the final rejection. Present Reissue Appl’n,
Notice of Appeal, filed Jan. 16, 2008.

ANALYSIS
This is a case of first impression. Resolution of the case hinges on
one fundamental question: Can a continuing reissue application broaden
patented claims beyond the statutory two-year period in a manner unrelated
to the broadening aspect that was identified within the two-year period? Put
another way, is it enough under the law to merely present an intent to
broaden that is limited to a particular aspect (e.g., a particular embodiment
of the invention) within the two-year period, yet broaden in unforeseeable
ways (e.g., pertaining to other embodiments) outside the two-year period?
To answer these questions, we first turn to the statute. Section 251
governs reissuing defective patents “deemed wholly or partly inoperative or
invalid, . . . by reason of the patentee claiming more or less than he had a
right to claim in the patent . . . .” 35 U.S.C. § 251, ¶ 1. Although this statute
is “remedial in nature,” and “based on fundamental principles of equity and
fairness, . . . not every event or circumstance that might be labelled ‘error’ is
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correctable by reissue.” In re Weiler, 790 F.2d 1576, 1579 (Fed. Cir. 1986).
Notably, the statute mandates that “[n]o 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.” 35 U.S.C. § 251, ¶ 4
(emphasis added).
This two-year limit codifies a long-standing equitable doctrine of
laches applied to broadening reissue applications,8 and ensures that the
public is timely notified of the intention to broaden patented claims. See In
re Graff, 111 F.3d 874, 877 (Fed. Cir. 1997). Notice is critical since the
potential expansion of the patentee’s patent rights via reissue likewise
affects the public’s rights in an increased likelihood of infringing that
expanded scope, notwithstanding the intervening rights provisions of § 252.
See 35 U.S.C. §§ 271 and 252. The reissue statute therefore “balances the
purpose of providing the patentee with an opportunity to correct errors of
inadequate claim scope, with the public interest in finality and certainty of
patent rights.” Graff, 111 F.3d at 877 (citation omitted). As such, the
“public is entitled to rely on the absence of a broadening reissue application
within two years of grant of the original patent.” Id.
In this appeal, Appellants’ original patent discloses two pertinent
embodiments:
(1) a conditional branching scheme for a linked list of buffers
containing pointers that point to certain buffer addresses according to a
buffer condition field in each buffer (FF 2) (“the first embodiment”), and

8 P.J. Federico, Commentary on the New Patent Act, 35 U.S.C.A. § 1 (West
1954), reprinted in 75 J. Pat. & Trademark Off. Soc’y 161, 205 (1993).

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(2) an alternative embodiment requiring no linked list of buffers in
which a channel is established between components of the system, and
drivers are associated with the components. FF 4. In this embodiment,
isochronous data is transmitted between components without interrupting the
CPU (“the second embodiment”). Id.
Two years after the original patent issued, Appellants filed a first
broadening reissue application. FF 5. Despite some technical defects with
this filing, the broadening was nonetheless considered to be timely and
limited to the first embodiment.9
But nearly six years later, in the present reissue application,
Appellants seek to broaden the original patent claims in a manner germane
to the second embodiment (see FF 29)—a broadening not mentioned in, or
consistent with actions taken in connection with, the first (see FF 5-10) or
second (see FF 12-20) reissue applications. Indeed, Appellants’
representative admitted this fact at the oral hearing.10

9 Although Appellants did not specify the nature of the broadening with
particularity in identifying the error to be corrected in the originally-filed
first reissue declaration, Appellants nevertheless concurrently added claims
via a preliminary amendment that were limited to the first embodiment. See
FF 5-6. Likewise, Appellants’ remarks accompanying the preliminary
amendment indicate that the newly-added claims were supported by
passages in the original patent’s disclosure commensurate with that
embodiment. Compare FF 7 with FF 2. Appellants later cured the noted
defect by filing another declaration [the third declaration] specifying that the
error to be corrected via broadening pertained to the first embodiment. See
FF 10.

10 The following dialogue occurred at the oral hearing:

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Simply put, the broadening in the present reissue application is in a
manner that was completely unforeseeable by the public within the two-year
period following the original patent’s issuance—a fact likewise admitted at
the oral hearing.11 Despite Appellants’ arguments to the contrary (App. Br.
5-7; Reply Br. 3-4), permitting such an unforeseeable broadening nearly
eight years after Appellants’ original patent issued12 simply runs counter to

JUDGE JEFFERY: But wasn’t your original declaration really
germane to a particular embodiment that is distinct from the
embodiment that you’re now trying to broaden claims?

MR. HULSE: Absolutely. Yeah, and I definitely would
concede that. The current claims are broadening in a way that would
not be covered by the original reissue declaration.

Transcript of Oral Hearing held July 8, 2009 (“Transcript”), at 4.

11 The following dialogue occurred at the oral hearing:

JUDGE JEFFERY: But how would the public be on notice of
such a broadening? You know, in this case, what, we’re talking what,
roughly 6 years later or so --

MR. HULSE: Absolutely.

JUDGE JEFFERY: -- where we’re proceeding after an
embodiment that no one could have foreseen within the 2 years.

MR. HULSE: Absolutely.

Transcript, at 6 (emphasis added).

12 See FF 27-29 (noting that June 11, 2007 was when Appellants first
indicated their intention to broaden claims directed to the second
embodiment in the present reissue application).

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the underlying public notice function of § 251—notice that must be timely to
ensure meaningful reliance on the finality and certainty of patent rights.
See Graff, 111 F.3d at 877.
Unreasonable delays in broadening patented claims undercut this
fundamental public reliance. As the Supreme Court indicates, “[e]very
independent inventor, every mechanic, every citizen, is affected by such
delay, and by the issue of a new patent with a broader and more
comprehensive claim.” Miller v. Brass Co., 104 U.S. 350, 355 (1881). And
“[t]he granting of a reissue for such a purpose, after an unreasonable delay,
is clearly an abuse of the power to grant reissues, and may justly be declared
illegal and void.” Id. Thus, for broadening reissues, “the rule of laches
should be strictly applied; and no one should be relieved who has slept upon
his rights, and has thus led the public to rely on the implied disclaimer
involved in the terms of the original patent.” Id. at 356.
Here, Appellants chose not to broaden the patented claims in a manner
directed to the second embodiment within the two-year statutory period, but
instead waited nearly eight years after Appellants’ original patent issued to
indicate their intention to broaden in this manner. See FF 27-29. Since this
broadening was completely unforeseeable by the public within the two-year
statutory period—a circumstance that is undisputed13—it runs counter to the
public notice function underpinning § 251 and is therefore improper.
To hold otherwise would effectively give Appellants a license to
unforeseeably shift from one invention to another via reissue well beyond
the two-year statutory period. This tactic undermines the public notice

13 See n.8, supra, of this opinion.

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function of § 251 and exacerbates uncertainty regarding the scope of patent
protection on which the public can reasonably rely—particularly for patents
with large numbers of disclosed embodiments.14
The key cases pertaining to broadening reissues do not change our
conclusion. In In re Doll, 419 F.2d 925 (CCPA 1970), a reissue application
was timely filed less than two years after the original patent issued adding
broader claims (claims 20-31). Id. at 926. Over two years later, however,
four additional broader claims were added (claims 32-35 copied from
another patent). Id. Two years later, claims 32-35 were amended, and two
additional broader claims (claims 42 and 43) were added. Id. Notably,
claims 32-35, 42, and 43 were not only broader than the claims originally
submitted in the reissue application (including claims 20-31 added in that
application), they were also presented well after the two-year statutory
period. Id.
This broadening was permissible under § 251 since the public was
notified of the patentee’s intention to broaden the claims within the two-year
period via the reissue application, and the statute did not preclude further
broadening beyond the two-year period during the course of prosecution. Id.
Accord Graff, 111 F.3d at 877. In reaching this conclusion, the Doll court
emphasized that § 251 permits broadening patented claims if “applied for”
(i.e., an application is filed) within two years from the original patent’s

14 See Transcript, at 11 (questioning whether the public could have foreseen
filing a broadening continuing reissue application for a 90th embodiment
beyond the two-year statutory period for a hypothetical application
containing 100 embodiments, where the applicant intended to broaden
claims to just a first embodiment within the two-year period).

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grant. Doll, 419 F.2d at 928. The court also noted that the intervening rights
provisions of § 252 provide adequate safeguards to the public in this
circumstance. Id.
But a key fact in Doll distinguishes it from the present appeal. The
reissue oath in Doll referred specifically to correcting errors via broadening
pertaining to a particular embodiment, namely the embodiment of Figure 4
of the original patent. Id. at 927-28.15 Claims 20-31 were therefore added
via reissue for that purpose. See id. Notably, it was undisputed that later-
added claims 32-35, 42, and 43 were broader than claims 20-31 and, like
claims 20-31, pertained to the embodiment of Figure 4. Id.
Although the Doll court held that this broadening beyond the two-year
statutory period was permissible, the broadening nevertheless pertained to
the specific embodiment identified in the original reissue oath—a factual
distinction that Appellants’ representative readily acknowledged at the oral
hearing.16 To the extent that this distinction was addressed in Doll in

15 Accord In re Wittry, 489 F.2d 1299, 1302 (CCPA 1974) (noting that “the
reissue oath in Doll stated that none of the patent claims afforded protection
to a specified embodiment of the invention covered by the new reissue
claims.”) (emphasis added).

16 The following dialogue occurred at the oral hearing:

JUDGE JEFFERY: In the reissue declaration in Doll, they
specifically identified Figure 4, Figure 4 embodiment, and the broadened
claims were germane to that embodiment after the 2-year period which was
fine. That’s distinct from your situation.

MR. HULSE: It absolutely is, and to the extent that Doll even deals
with that issue it was to a separate rejection. It wasn’t for the impermissible
broadening rejection.
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connection with determining whether the reissue oath was adequate as
Appellants contend,17 it is of no consequence here, for the fact remains that
the broader claims filed beyond the two-year statutory period in Doll were
commensurate with the embodiment identified in the original reissue oath.
See Doll, 419 F.2d at 927-28. As such, in Doll, the public was seasonably
notified of the manner in which the claims would be broadened (i.e., with
respect to the embodiment of Figure 4), although this broadening occurred
beyond the two-year statutory period.18
This timely notice, however, does not exist in the present appeal.
Unlike Doll, Appellants seek to broaden the patented claims in the present
reissue application in a manner pertaining to a different embodiment than
that specified in the originally-filed reissue declaration (see FF 29)—a
manner totally unforeseeable when that declaration was filed nearly six
years earlier. See FF 5-7. As we indicated previously, since this practice
runs counter to the public notice function of § 251, it is improper under that
statute.
To be sure, the agency rule governing reissue declarations does not
require specifying all errors to be corrected via reissue. Rather, reissue
declarations need only specify “at least one error being relied upon as the

Transcript, at 10-11 (emphases added).

17 See Transcript, at 10-11.

18 See also Buell v. Beckestrom, 22 USPQ2d 1128, 1131-32 (BPAI 1992)
(non-precedential) (holding that § 251 did not preclude presenting claims via
a timely-filed divisional reissue application after the two-year statutory
period that were broader than the patented claims).

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22
basis for reissue.” 37 C.F.R. § 1.175(a)(1) (emphasis added). A similar
provision exists for continuing reissue applications.19 Despite their breadth,
however, these provisions must be interpreted in light of the critical public
notice function for broadening reissue applications underpinning § 251. As
such, the rules cannot circumvent this statutory mandate, but should be read
consistent with the statutory mandate.
Moreover, the Manual of Patent Examining Procedure notes, quite
broadly, that “[w]here 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.” MPEP § 1412.03(IV), 8th ed., Rev. 7, July 2008 (emphases added).
The MPEP further explains that “a broadened claim may be presented in a
reissue application after the two years, even though the broadened claim
presented after the two years is different than the broadened claim presented
within the two years.” Id. (emphasis added).
Appellants seize upon this ambiguous expansive language in the
MPEP to support the contention that the MPEP permits broadening claims in
any manner after two years so long as “any intent to broaden” was presented
within two years which, according to Appellants, they have done. App. Br.
7; Reply Br. 3-4. Although Appellants cite to an earlier version of the

19 See 37 C.F.R. § 1.175(e) (noting that continuing reissue applications
require identifying “at least one error in the original patent which has not
been corrected by the parent reissue application or an earlier reissue
application”) (emphasis added).

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23
MPEP in the Briefs,20 Appellants are nonetheless correct that the MPEP
seemingly indicates as much given this broad language. Notably, however,
the latest revision of the MPEP qualified this broad language by mandating
that “any intent to broaden” must be “unequivocally indicated”—a
requirement not satisfied by merely stating that the patent is inoperative by
claiming “more or less” that applicant had a right to claim. MPEP §
1412.03.
Considering the MPEP passage as a whole, the added qualification
could merely pertain to ensuring that the declaration was “unequivocal” with
respect to articulating the intent to broaden generally (as opposed to
narrowing), and not pertain to the specific manner of the broadening. But
even assuming, without deciding, that this is the case, we still are
unconvinced that the law permits broadening in a completely unforeseeable

20 We reach this conclusion in view of Appellants’ cited quotations from
passages from MPEP § 1412.03 that omit certain passages that were inserted
in the July 2008 revision. For example, Appellants quote the MPEP as
stating, in pertinent part, “[w]here any intent to broaden is 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.” App. Br. 7. The quotation, however, omits the term
“unequivocally” that was inserted between the terms “is” and “indicated” in
that passage in the July 2008 revision. See MPEP § 1412.03. Appellants’
quotations also omit the following sentence added to the latest revision:
“(Note: A statement that ‘the patent is wholly or partly inoperative by
reason of claiming more or less that applicant had a right to claim’ is NOT
an unequivocal statement of an intent to broaden.” See id. These revisions
were noted at the oral hearing. Transcript at 5.

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manner after two years as Appellants have done here, particularly when
considering the MPEP together with the reissue statute and its crucial public
notice function.
Section 251 provides that “the Director may issue several reissued
patents for distinct and separate parts of the thing patented . . . .” 35 U.S.C.
§ 251, ¶ 2 (emphases added). This provision has been interpreted as
enabling—not limiting—to ensure that applicants are not placed under any
greater burden regarding divisional or continuation reissue applications as
compared to divisions and continuations of original applications, so long as
the statutory requirements specific to reissue applications are met. Graff,
111 F.3d at 876-77.
That is, the requirements for continuation and divisional reissue
applications are commensurate with those for continuation and divisional
applications for original applications, with the added requirement that the
statutory reissue requirements must also be met. See id. A divisional
application is filed to cover a particular invention that is independent or
distinct from other inventions that are claimed in one application. See
35 U.S.C. § 121. “A continuation application is a second application for the
same invention claimed in a prior nonprovisional application and filed
before the prior application becomes abandoned or patented.” MPEP
§ 201.07 (emphasis added). Both applications, however, can claim the
benefit of the filing date of their respective original applications. See
35 U.S.C. §§ 120 and 121.
This distinction between divisional and continuation applications
applies as well to reissue applications. See Graff, 111 F.3d at 876-77. As
noted above, § 251 enables the issuance of “several reissued patents for
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distinct and separate parts of the thing patented . . . .” 35 U.S.C. § 251, ¶ 2
(emphases added). But continuation reissue applications are not ordinarily
filed “for distinct and separate parts of the thing patented” as called for in
this section. MPEP § 1451(II). Rather, the “distinct and separate parts of
the thing patented” are more commensurate with independent and distinct
inventions that would be appropriate for divisional reissue applications.
See MPEP § 1451(I).
Inventions are distinct if (1) the inventions as claimed are not
connected in at least one of design, operation, or effect, and (2) at least one
invention is patentable (novel and nonobvious) over the other. MPEP
§ 803(II). But when claims define the same essential characteristics of a
single disclosed embodiment of an invention, the “claims are not directed to
distinct inventions; rather they are different definitions of the same disclosed
subject matter, varying in breadth or scope of definition.” MPEP § 806.03.
In the present reissue application, newly-added claims 12-32 call for,
in pertinent part, an isochronous channel in which the sender and listener
clients are added by device drivers (i.e., the second embodiment). FF 28.
By being directed solely to the second embodiment, these claims are
therefore directed to an invention that is independent and distinct from that
claimed in original patent, as well as the first and second reissue applications
(i.e., the first embodiment). See FF 4A, 5, 12, and 16-19.
While § 251, ¶ 2 permits reissue applications for “distinct and separate
parts of the thing patented” (i.e., independent and distinct inventions), the
other statutory requirements for reissue applications must still nevertheless
be met. See Graff, 111 F.3d at 876-77. And these other requirements
include “applying for” such an independent and distinct invention via a
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reissue application (e.g., a divisional reissue application) within two years of
the original patent’s grant. See 35 U.S.C. § 251, ¶ 4; see also Doll, 419 F.2d
at 928. That has simply not been done in this case for the independent and
distinct invention pertaining to the second embodiment. Indeed, Appellants
waited nearly eight years after Appellants’ original patent issued to indicate
their intention to broaden in this manner (see FF 27-29)—an unreasonable
delay.21
The U.S. Supreme Court all but said as much in Webster Elec. Co. v.
Splitdorf Elec. Co., 264 U.S. 463 (1924). There, a divisional application was
filed approximately five years after the parent application was filed in
February 1910, but before the parent application issued in 1916. Id. at 464.
In June of 1918, however, an amendment was filed in the divisional
application adding broader claims that were later patented. Id. at 464-65.
Notably, the broadened claims added via this amendment were first
presented to the Patent Office eight years and four months after the original
application was filed. Id. at 465.

21 Although the present reissue application is considered to be a broadening
reissue despite the added claims 12-32 being directed to an independent and
distinct invention (see FF 29), we note in passing that the mere failure to file
a divisional application on disclosed, but unclaimed patentably distinct
inventions during prosecution is not an error correctable by reissue. See
Weiler, 790 F.2d at 1581-83; see also In re Mead, 581 F.2d 251 (CCPA
1978). Similarly, deliberately failing to file continuing applications to cover
disclosed but unclaimed subject matter in the original application is likewise
uncorrectable via reissue. See In re Serenkin, 479 F.3d 1359, 1362-63 (Fed.
Cir. 2007).

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The Court held this delay was unreasonable, noting that the patentee
“Kane did not originally intend to assert these amended claims, because he
considered their subject-matter one merely of design and not of invention,
and the inference is fully warranted that the intention to do so was not
entertained prior to 1918.” Id. The Court noted that during all of this time,
the subject matter of the broadened claims “was disclosed and in general
use, and Kane and his assignee . . . simply stood by and awaited
developments.” Id. This was not, however, “the simple case of a division of
a single application for several independent inventions, . . . but [rather] a
case of unreasonable delay and neglect on the part of the applicant and his
assignee in bringing forward claims broader than those originally sought.”
Id. at 465-66 (emphases added).
In reaching its decision, the Court relied heavily on equitable
principles, particularly as they applied to delays in correcting errors via
reissue applications,22 and adopted a similar two-year time limit for
divisional applications. Id. at 471. Although the Court later held that
Webster’s presumptive two-year time limit was dictum, the Court
nevertheless “ratified prosecution laches as a defense to infringement actions
involving new claims issuing from divisional and continuation applications
that prejudice intervening adverse public rights.” Symbol Techs., Inc. v.
Lemelson Med., Educ. & Res. Found., 277 F.3d 1361, 1364 (Fed. Cir. 2002)
(citing Crown Cork & Seal Co. v. Ferdinand Gutmann Co., 304 U.S. 159
(1938) and Gen. Talking Pictures Corp. v. W. Elec. Co., Inc., 304 U.S. 175

22 See id. at 466-69 (discussing cases adopting an equitable two-year time
limit to correct errors via broadening reissue applications).

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(1938)). That is, the Court ratified the doctrine of prosecution laches in
Crown Cork and General Talking Pictures, but did not apply it in those
cases in the absence of intervening rights.
But broadening patented claims via reissue by its very nature
prejudices intervening adverse public rights since the public is entitled to
rely on the patentee’s rights that existed before the patent’s error was
corrected (i.e., before the broadening). See 35 U.S.C. § 252. Therefore, the
doctrine of prosecution laches is particularly applicable in reissue. Indeed,
these very equitable principles were codified in 35 U.S.C. §§ 251 (reissue
statute) and 252 (intervening rights regarding reissued patents).23
Webster is therefore analogous to the present reissue application.
Like the divisional application in Webster, the present reissue application
was filed such that it was copending with its parent application (see
FF 22-23)—a continuation reissue application that was itself filed during the
copendency of the first reissue application (see FF 11-12). That is, both the
divisional application in Webster and the present reissue application were
timely filed in terms of their copendency with their respective parent
applications to obtain the benefit of the earlier-filed applications. See 35
U.S.C. §§ 120 and 121.
But mere continuity to the parent application under §§ 120 and 121 is
not enough to foreclose the doctrine of prosecution history laches in a
manner commensurate with the delay in Webster. See In re Bogese, 303
F.3d 1362, 1367 (Fed. Cir. 2002) (citing Webster as an example of
prosecution history laches). Where, as here, Appellants waited nearly eight

23 See n.6, supra, of this opinion.

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years after their original patent issued to indicate their intention to broaden
claims to the independent and distinct invention pertaining to the second
embodiment (see FF 27-29), we see no reason why this situation should be
treated any differently than Webster. In this circumstance, the public can
reasonably infer that Appellants had no such intention and therefore
dedicated this subject matter to the public.24
To hold otherwise would eviscerate the public notice function of
§ 251 by essentially giving patentees a license to unforeseeably shift from
one invention to another via reissue well beyond the two-year statutory
period. This tactic not only exploits latent subject matter that is reasonably
presumed to be dedicated to the public by Appellants’ own actions, but also
circumvents the countervailing public reliance interest in the certainty and
finality in patent rights guaranteed by the two-year statutory period. See
Graff, 111 F.3d at 877.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of claims 12-32 under 35 U.S.C. § 251.
Therefore, we will sustain the Examiner’s rejection of those claims.

CONCLUSION
Appellants have not shown that the Examiner erred in rejecting claims
1-4 and 8-32 under § 251.

24 See Sontag Chain Stores Co., Ltd. v. Nat’l Nut Co. of Cal., 310 U.S. 281,
291 (1940) (“[D]ue diligence must be exercised in discovering the mistake
in the original patent, and that, if . . . sought for the purpose of enlarging the
claim, the lapse of two years will ordinarily, though not always, be treated as
evidence of an abandonment of the new matter to the public . . . .”)
(quotation marks and citation omitted).

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ORDER
The Examiner’s decision rejecting claims 1-4 and 8-32 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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