Scott Daniels | April 30, 2010

On Monday, the PTO Board of Appeals affirmed the examiner’s rejection of Apple’s Reissue App. S.N. 11/503,541, as an improper attempt to broaden the original claims more than two years after the original issue date of the patent.

Apple’s original patent – U.S. Patent No. 5,940,600 – is entitled “Isochronous Channel having a Linked List of Buffers” and relates to a computer system of interconnected electronic components.  The ‘600 Patent has already been reissued twice, once as Re Patent 38,641 and once as Re Patent 39,763.

In this third reissue application, Apple admitted that a broadening reissue application must be filed within two years of the issue date of the original patent.  35 U.S.C. § 251, ¶4.  Apple also admitted that it sought to broaden the original ‘600 Patent claims in a manner different from how it had previously broadened the ‘600 claims in the ‘641 and ‘763 Reissue Patents.

Apple argued, however, that broadened reissue claims are permissible if the patentee expresses an intent to broaden the claims within two years of the original issue date, even though the patentee does not state in what respect the claims would be broadened within that period: as long as the patentee notifies the public in its reissue application of its intent to broaden the claims in any respect within the statutory two-year period, it is not necessary to state the specific respect in which the claims are broadened within that statutory period.

The Board framed the issue as “whether a continuing reissue application can broaden the patented claims beyond the two-year statutory period in a manner unrelated to the broadening aspect that was identified within the two-year period” (emphasis added), and concluded that such a broadening was precluded by § 251, ¶4.

The Board relied upon an admission by Apple’s counsel that the requested claim broadening would not have been foreseeable by one skilled in the art from the broadening that Apple had requested within the two-year period.  Accordingly, the public was not given sufficient notice of the claim broadening sought in the third reissue.  The eight-year gap between the ‘600 patent issue date and the filing date of the third reissue application also must have influenced the Board’s decision.

The ability of the public to foresee the eventual broadening is thus the key to the availability of claim changes made after the two-year period.  It is not necessary that the ultimate claims be in the precise form proposed within that period, only that they recite substantially the same subject matter.

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