Examiner Misapplies Statutory Prohibition against Enlarging Claim Scope in Reexamination

Scott Daniels | October 28, 2010

Qualcomm won an important victory yesterday when the PTO Board of Appeals reversed the reexamination examiner’s rejection of most of the claims of U.S. Patent No. 5,778,338 – see Ex parte Qualcomm.  The ‘338 patent claims an apparatus and method for compressing speech for transmission.  Qualcomm sued both Nokia and Broadcom for infringement of the ‘338 patent and later settled.

What interests us in the case, however, is the Board’s treatment of the examiner’s rejection of claims 9 and 10 for enlarging the scope of the claims, in violation of 35 U.S.C. § 305. Section 305, the infamous “special dispatch” provision, states in relevant part that “[n]o proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding under this chapter.”

Claims 9 and 10 depend on independent apparatus claim 1 and independent method claim 5, respectively, and further define the “frame error signal” recited in those claims.  They were added by the patentee during the reexamination and thus not original claims.  The examiner mixed the concepts of new matter and claim enlargement to reject claims 9 and 10:

Claims 9-10 were found to contain new matter for the reasons set forth in the previous section.  Accordingly, claims 9-10 are also rejected under 35 U.S.C. 305 for enlargement of scope of the original patent, since the introduction of new matter enlarges the original scope of the patent.

The Board disagreed, explaining that “Section 305 is not concerned with the written description in the specification, but with the relative scope of the rejected claim as compared to the closest original patent claim.”  Only if the claim in question is broader in scope “in any respect” than the closest original claim, is a rejection under Section 305 proper.  Here, the Board correctly noted that claims 9 and 10, as dependent claims, contained each of the limitations of claims 1 and 5, respectively, and further narrowed the scope of the claimed invention.  In no respect were claims 9 and 10 broader in scope than claims 1 and 5.

We should add, though, that the Board affirmed the examiner’s rejection of claims 9 and 10 for failing to have written description support in the specification.

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