ABCD/ABCDE/BCDE

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2. A U.S. patent was granted on May 8, 2001. The sole independent claim in the patent is

directed to a combination of elements ABCD. A registered practitioner filed a reissue

application on April 11, 2003 to narrow sole independent claim. In the reissue application, the

independent claim is amended to a combination to elements ABCDE. The reissue application is

accompanied by a transmittal letter stating that the application was filed to narrow a claim, that

all inventors could not be located to sign the reissue oath or declaration at that time, and that a

declaration would be submitted in due course. No other amendments to the claims were filed on

April 11, 2003. On May 8, 2003, a declaration signed by all inventors is filed declaring that they

had claimed less than they had a right to claim, and that the error arose without deceptive intent.

The inventors also filed on May 8, 2003 a preliminary amendment deleting element A from the

sole independent claim leaving elements BCDE. The amendment and declaration are filed using

the provisions of 37 CFR 1.10. The practitioner included an authorization to charge the

practitioner’s deposit account for any necessary fees. Which of the following actions by the

primary the examiner in the first Office action is in accordance with the patent laws, rules and

procedures as related in the MPEP?

(A) Reject all the claims based upon a broadening reissue outside the two year

statutory period authorized by 35 USC 251 since applicant did not file a

broadened reissue claim at the time of filing.

(B) Reject all the claims based upon a broadening reissue outside the two year

statutory period authorized by 35 USC 251 since applicant did not file a claim to a

broadened reissue claim within the two year period set by 35 USC 251.

(C) Reject all the claims based upon a broadening reissue outside the two year

statutory period authorized by 35 USC 251 since applicant’s indication in the

transmittal letter indicated that the filing of the reissue application was a

narrowing reissue and that the broadening amendment was not permissible even if

filed within the two-years from the grant of the original patent.

(D) Determine that the application is a proper broadening reissue and perform an

examination and issue an Office action in due course.

(E) Determine that the application is a proper broadening reissue and reject the claims

under the recapture doctrine since the claims are broader than the issued claims.

2. ANSWER: (D) is the most correct answer. MPEP §§ 1403 and 1412.03, under the heading “When A Broadened Claim Can Be Presented.” A broadening reissue claim must be filed within the two years from the grant of the original patent. (D) is the most correct and the examiner should examine the case as any other application and address appropriate issues concerning reissue examination. See Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964) (a similar rule in interferences). Since applicant filed the amendment by Express Mail, the amendment is treated as being filed with the USPTO on the date of deposit with the US Postal Service. Therefore, (A), (B) and (C) are incorrect answers. A reissue application can be granted a filing date without an oath or declaration, or without the filing fee being present. See 37 CFR § 1.53(f). Applicant will be given a period of time to provide the missing parts and to pay the surcharge under 37 CFR § 1.16(e). See MPEP § 1410.01. Choice (E) is not correct since the mere deletion of an element of a claim does not automatically raise a ground of rejection based on the recapture doctrine. See MPEP § 1412.02.