Oath Addressing Only New Claims Acceptable
Last week the BPAI considered an application for patent reissue (U.S. Patent 5,819,034) Ex Parte Kuiacose Joseph et al. The appeal considered the propriety of an oath in a patent reissue that did not identify a mistake in the original claims. A similar question was recently explored at the CAFC (In re Tanaka) relative to new, dependent claims.
In the application for patent reissue the original claims were cancelled in favor of new claims directed to a different invention. The cancelled, original claims were presented in a divisional patent application (now suspended pending the reissue). The Examiner found the reissue oath, which was directed to new method claims, defective since it did not identify an error in the original claims. The originally issued claims were directed to a system.
In other words, consistent with the USPTO’s Tanaka argument, the Examiner took the position that the oath was defective as not identifying any defect in the issued patent. The BPAI disagreed with the examiner.
With respect to the oath, the Applicant explained the ‘034 Patent to be wholly or partly invalid:
…by reason of my claiming less than I had the right to claim in the patent. Specifically, the patent discloses a method and system that, stated generally, facilitate the presenting of data about an item being offered for sale to a user,and in response to a single action by the user, generating an order for the item. This invention is distinct from the invention claimed in the original patent; and is not in any way claimed in the patent. (emphasis added)
As stated in the oath, the disclosure was directed to a system and method, and the new claims (this invention) included the specific language noted. The original claims were all system claims.
The examiner found this language lacking, explaining:
[t]his statement of error is not sufficient because it does not identify a single word, phrase, or expression in the specification or in an original claim(s) 1-9, and how it renders the original patent wholly or partly inoperative or invalid. The statement filed is no better than saying in the reissue declaration that this ‘application is being filed to correct errors in the patent which may be noted from the change made by adding new claim 10.’, see MPEP 1414, II, C.
In reversing the examiner, the Board stated:
We find the phrase “facilitate the presenting of data about an item being offered for sale to a user, and in response to a single action by the user, generating an order for the item” describing what the original claims omitted has sufficient specificity.
Interestingly, the Board did not reference the Tanaka decision. While the original claims were cancelled here (unlike Tanaka), the decision makes clear that the original claims were not surrendered. The originally issued claims remain pending in another proceeding. Prior to Tanaka, the examiner would have likely been affirmed.
This decision, and Tanaka, make clear that presentation of claim errors need not reference original claims at all. Moreover, as I have explained in the past, comparison between originally issued claims and new claim language in patent reissue should be avoided by Patentees.