PTO Board Reverses Rejection of Claim for being Broadened in Reexamination

Scott Daniels | December 27, 2011

Does the statutory prohibition against broadening the scope of claims in reexamination (see 35 U.S.C. § 314(a); 37 C.F.R. § 1.906) apply on a claim-by-claim basis or to the scope of the claims as a whole?  Put more concretely, may a patentee in reexamination broaden the scope of a dependent claim?  The answer is that the prohibition applies to the scope of the claims as a whole, and a patentee is allowed to broaden its dependent claims.

             The issue was raised in the Board’s decision last week in Shimano v. Patent of MBI, (95/001,051).  There, in the course of reexamination, the patentee maintained, without amendment, the scope of original claim 1, as well as scope of original claim 6 that depended upon it.  Claim 7 that depended on claim 6, however, was broadened to encompass embodiments not within its original scope.  The examiner therefore rejected claim 7 for being impermissibly broadened, citing § 314(a).  

             The Board reversed, holding that a claim in reexamination “enlarges the scope of the claims of the patent being reexamined where the claim is broader than each and every claim of the patent.”  Here, “the scope of amended claim 7, which ultimately depends from claim 1 through intervening claim 6, is fully subsumed within the scope of its base claim (claim 1 of the original patent)”.  Comparison of an amended dependent claim to the corresponding original dependent claim “is insufficient,” the Board found, because the comparison must be with all the original claims of the patent.

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