Ex Parte Riddle

Board of Patent Appeals and Interferences

Feb 10, 2011

10857799 (B.P.A.I. Feb. 10, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GUY G. RIDDLE
____________

Appeal 2011-002276
Application 10/857,799
Patent 5,999,977
Technology Center 2400
____________

Before ALLEN R. MacDONALD, JOHN A. JEFFERY, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 16-64. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
The present application on appeal is a continuation of Application No.
10/020,515 which seeks to reissue U.S. Patent 5,999,977 (“the ‘977 patent”).
The present application is said to be related to three appealed applications:
(1) Application No. 11/503,541 (Appeal No. 2009-007162);
(2) Application No. 10/669,119 (Appeal No. 2009-006496); and
(3) Application 10/857,805 (Appeal No. 2011-0022772).
Br. 2. The Examiner, however, notes that a fourth application is also related
to the present appeal:
(4) Application 10/857,806 (Appeal No. 2011-001749).
Ans. 2.
Two of these related appeals have been decided, namely Appeal
Numbers 2009-007162 (reproduced in the Appeal Brief’s Related
Proceedings Appendix) and 2009-006496. See Ex parte Staats, No. 2009-
007162, 2010 WL 1725728 (BPAI 2010) (expanded panel) (non-
precedential), appeal docketed, No. 2010-1443 (Fed. Cir. Aug. 4, 2010)
(affirming Examiner’s rejection of claims under 35 U.S.C. § 251 as
impermissibly broadening patented claims beyond the two-year statutory
period); see also Ex parte Kelly, No. 2009-006496, 2010 WL 3454272
(BPAI 2010) (non-precedential) (same). Since the present application
pertains to substantially the same issue of law as in Staats and Kelly,3 the
reasoning in those cases applies largely to the issue before us here as well.

2 Although some citations to related applications do not include
corresponding appeal numbers (e.g., the ‘805 application), we nonetheless
include them here for clarity.
3 Accord Br. 2 (noting that Appeals 2009-006496 and 2009-007162 “deal[]
with substantially the same issue of law”).
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Appellant’s invention establishes a communication session with an
endpoint according to identified communication capabilities. See generally
‘977 Patent, col. 7, line 33 – col. 10, line 41; col. 12, ll. 45-62. Claim 16 is
illustrative:

16. A method for establishing a communication session comprising:

a. identifying communication capabilities to an endpoint;

b. notifying said endpoint of the desire to connect;

c. receiving, from said endpoint, notification of confirmation to
connect; and

d. establishing the communication session according to said
communication capabilities.

THE REJECTION
The Examiner rejected claims 16-64 under 35 U.S.C. § 251 as being
improperly broadened in a reissue application filed outside the two-year
statutory period. Ans. 3. 4

4 Throughout this opinion, we refer to the Appeal Brief filed July 12, 2010
and the Examiner’s Answer mailed August 26, 2010.
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CONTENTIONS
The Examiner concludes that the present continuation reissue
application impermissibly broadens the patented claims beyond two years
from the original patent’s issuance. Ans. 3-11. In reaching this conclusion,
the Examiner does not dispute that the present application is a proper
continuation application of the originally-filed reissue application
(10/020,515) (“the parent application”). Nor is it disputed that Appellant
indicated an intent to broaden the patented claims within two years of the
original patent’s issuance in the parent’s reissue declaration, despite
Appellant’s failing to (1) specify the error with particularity, and (2) sign the
declaration. See Ans. 5 (acknowledging that the parent application
(1) included a declaration indicating that the application was a broadening
reissue, and (2) was filed on December 7, 20015—two years after the
original patent issued (December 7, 1999)).
Nevertheless, the Examiner concludes that the present reissue
application seeks to broaden the claims in an entirely different manner that is
not covered by the declaration filed in the first reissue application. Ans.
3-11. According to the Examiner, the public would therefore not have been
notified of the unrelated broadening in this application within the statutory
two-year time period. Id.

5 Although the parent reissue application initially had a December 18, 2001
filing date, the USPTO later changed the filing date to December 7, 2001.
See Parent Appl’n, Decision Granting Petition, mailed Oct. 2, 2003. We
nevertheless refer to documents submitted in connection with the parent
reissue application on the dates they were entered into the record for clarity
and consistency.
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Appellant, however, argues that the parent application satisfied
applicable broadening reissue requirements by including two unequivocal,
timely-filed broadening intentions: (1) an inventor declaration stating that
the accompanying application is a broadening reissue, and (2) an
accompanying preliminary amendment that added a broadened claim. Br.
7-8, 10. Based on this presentation of an intent to broaden the patented
claims within two years of the patent’s issuance, Appellant maintains that
additional broadened claims can be presented after the two-year statutory
period in the present continuation application, yet comply with the statute.
Br. 10.
The issue before us, then, is as follows:

ISSUE
Has the Examiner erred in rejecting claims 16-64 under § 251 as
impermissibly broadening the patented claims via reissue outside the two-
year statutory period?
This issue turns on whether a continuing reissue application can
broaden patented claims beyond the two-year statutory period in a manner
unrelated to the broadening aspect that was identified within the two-year
period.

FINDINGS OF FACT (FF)
Original Patent
1. U.S. Patent 5,999,977 (“the original patent”) issued December 7,
1999.
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2. Claims 1-15 of the original patent include two independent claims
1 and 9. Claim 1 recites a method for optimizing transmitting data to plural
second endpoints including, in pertinent part:
(a) a first endpoint (i) activating a multicast communication channel
with a first multicast address, and (ii) commencing broadcasting data over a
multicast channel;
(b) the first endpoint transmitting a request message to each second
endpoint to query whether they can receive transmissions broadcast to the
first multicast address;
(c) certain second endpoints transmitting an acknowledgment message
that is received by the first endpoint;
(d) deactivating a point-to-point channel with the certain second
endpoints for each received acknowledgment message; and
(e) terminating the broadcast of data and the multicast communication
channel if at least two second endpoints do not transmit positive
acknowledgement messages.
Claim 9 recites an apparatus with commensurate limitations.
‘977 Patent, col. 23, l. 58 – col. 24, l. 21; col. 24, l. 50 – col. 25, l. 4
(text of claims 1 and 9).
3. Column 21, line 35 through column 22, line 4 (entitled
“Multicast”) and Figures 30a and 30b of the ‘977 patent disclose an
optimization process that converts point-to-point connections to multicast
connections for a teleconference if multiple participants support multicast
address broadcast capabilities. ‘977 Patent, col. 3, ll. 38-40; col. 21, l.
35 – col. 22, l. 4; Figs. 30a-30b.

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Parent Reissue Application
4. The parent reissue application 10/020,515 (“parent application”)
was filed December 7, 20016 along with a preliminary amendment adding
independent claim 16. Prelim. Amd’t Accompanying Parent Appl’n, filed
Dec. 18, 2001.
5. Claim 16 of the parent application is identical to patented claim 1
except for clause (e) (“terminating” limitation). The change to patented
claim 1’s clause (e) is noted below (strikethroughs and underlining added to
indicate changes):
e. terminating said broadcast of said data and said multicast
communication channel if at least two of said plurality of
second endpoints do not transmit said acknowledgment
messages containing a positive acknowledgment a
predetermined condition regarding said acknowledgment
messages from said plurality of second endpoints is satisfied.

Compare ‘977 Patent, col. 24, ll. 17-21 (text of clause (e) of claim 1)
with Prelim. Amd’t Accompanying Parent Appl’n, filed Dec. 7, 2001 (text of
clause (e) of claim 16).
6. A first reissue declaration submitted in the parent application
identifies at least one error upon which the reissue was based as follows:
“This is a broadening reissue to claim subject matter discussed in the
specification, and which the patentee had the right to claim.” Parent Appl’n,
Decl. filed Dec. 18, 2001.

6 As noted previously, this is the parent application’s corrected filing date
nothwithstanding later dates of entry of relevant documents in connection
with the filing of this reissue application into the record. See n.5, supra, of
this opinion.
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7. Appellant’s remarks accompanying the parent application’s
preliminary amendment indicate that “[c]laim 16 is supported in the patent
disclosure, for example, at column 21, line 35 through column 22, line 4 and
Figures 30a and 30b.” Remarks Accompanying Parent Appl’n Prelim.
Amd’t, filed Dec. 18, 2001.
8. On July 9, 2002 (after the two-year anniversary of the ‘977 patent),
a second declaration was filed in the parent application identifying at least
one error upon which the reissue was based as follows:
At least one error being relied upon as the basis for reissue is
the failure to claim or further claim subject matter disclose [sic]
in the specification pertaining to circuitry in a conference
component of a member of a first teleconference call for
merging the first teleconference call with a second
teleconference call.

Parent Appl’n, Decl. filed July 9, 2002.
9. On July 9, 2002, Appellant filed an amendment adding
independent claims 17-20 reciting a method and apparatus for merging
teleconference calls. Claims 17 and 19 of that amendment are reproduced
below:
17. (New) A method for merging a first teleconference
call including a first member and one or more members with a
second teleconference call including the first member and a
second member, comprising:

a conference component of the first member transmitting
a merge request message to a conference component of the
second member requesting merger of the first teleconference
call with the second teleconference call, the merge request
message identifying the one or more other members of the first
teleconference call;

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a conference component of the second member receiving
the merge request message and transmitting a join message to
conference components of the one or more other members; and

the conference components of the first member, the
second member and the one or more other members
establishing one teleconference call.

* * *

19. (New) Circuitry in a conference component of a
member of both a first teleconference call and a second
teleconference call for merging the first teleconference call with
the second teleconference call, comprising:

circuitry for transmitting a merge request message to a
second member of the first teleconference call, the merge
request message identifying one or more other members of the
second teleconference call.
* * *
Parent Appl’n, Amd’t filed July 9, 2002.
10. Appellant’s remarks accompanying the parent application’s July
9, 2002 amendment refer to four exemplary citations in the ‘977 patent
disclosure that are said to support claims 17-20:
(a) column 9, lines 22 through 67;
(b) Figures 8-10;
(c) column 19, line 40 through col. 20, line 49; and
(d) Figures 26-29.
Remarks Accompanying Parent Appl’n Amd’t, filed July 9, 2002.
11. On July 6, 2005, Appellant (1) cancelled claims 17-20 responsive
to a restriction requirement, and (2) submitted a declaration identifying at
least one error upon which the reissue was based as follows:
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At least one error being relied upon as the basis for reissue is
the failure to claim or further claim subject matter disclosed in
the specification pertaining to terminating transmission if a
predetermined condition in an acknowledgement message is
met.

Parent Appl’n Amd’t and Decl. filed July 6, 2005.
12. On August 8, 2007, Appellant filed a Request for Continued
Examination (RCE) in the parent application adding claims 21-46, four of
which were independent: claims 21, 33, 34, and 46. Claim 21 recites a
method for optimizing a data transmission mode between a first entity and
plural second entities comprising, in pertinent part:
(a) the first entity multicasting a request message to plural second
entities over a communication channel, the request message used to initiate
transition from a point-to-point mode to a multicast mode;
(b) the first entity receiving an acknowledgment message from certain
second entitites responsive to the request message, the acknowledgment
message indicating that the certain second entitites was able to receive the
multicast request message; and
(c) if such an acknowledgment is received, deactivating the point-to-
point channel between the first entity and the certain second entities.
Claim 33 of this amendment recites an apparatus with commensurate
limitations. Claims 34 and 46 of this amendment recite a method and
apparatus for changing a data transmission mode between a first entity and
plural second entities with similar limitations as claims 21 and 33, except
that claims 34 and 46 recite transitioning communication between the first
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entity and the plural second entities from a point-to-point mode to a
multicast mode when the acknowledgment message is received. Amd’t
accompanying Parent Appl’n RCE filed Aug. 8, 2007.
13. Appellant’s remarks accompanying the amendment of the RCE in
the parent application indicate that “[c]laims 21-46 are supported in the
patent disclosure, for example, at column 21, line 35 through column 22,
line 4 and Figures 30a and 30b.” Remarks Accompanying Parent Appl’n
Amd’t for RCE, filed Aug. 8, 2007.
14. Following further prosecution, the Examiner allowed the parent
application on January 31, 2011. Notice of Allowability mailed Jan. 31,
2011.

The Present Continuation Reissue Application (The Application on Appeal)
15. The present application, Application No. 10/857,799 (the
application on appeal), was filed May 28, 2004, and is said to be a
continuation of the parent reissue application.
16. A preliminary amendment was filed accompanying the present
application that (1) cancelled claims 1-15, and (2) added claims 16-63—four
of which were independent (claims 16, 37, 58, and 62). Claim 16 of that
amendment is reproduced below:
16. (New) A method for establishing communication
comprising:
a. identifying communication capabilities to an endpoint;
b. notifying said endpoint of the desire to connect;
c. receiving, from said endpoint, notification of
confirmation to connect; and
d. establishing communication according to said
communication capabilities.

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Claims 37 and 58 of this amendment recite a method and apparatus with
similar limitations, except that the limitations corresponding to steps (a)-(c)
above involve separate messages. Claim 62 recites an apparatus with similar
functionality, but further recites (1) first and second messages including first
and second communication capabilities, respectively, along with respective
desires to connect; (2) a communication confirmation circuit’s transmitting a
third message to notify the endpoint of confirmation to connect; and (3) a
communication establishment circuit for establishing communication
according to either the first or second capabilities responsive to an
endpoint’s response to the first message. Present Appl’n Prelim. Amd’t,
filed May 28, 2004.
17. Appellant’s remarks accompanying the present application’s
preliminary amendment indicate that “[s]upport for new claims 16-63 can be
found in the specification of the issued patent at, for example, col. 7, line 33
through col. 10, line 41; and col. 12, lines 45 through 62.” Remarks
Accompanying Present Appl’n Prelim. Amd’t (“Status of Claims and
Support for Claim Changes”), filed May 28, 2004.
18. On May 28, 2004, Appellant filed a declaration in the present
application that referenced reissue application number 10/020,515 which
was signed June 27, 2002. This declaration identified at least one error upon
which the reissue was based as follows:
At least one error being relied upon as the basis for reissue is
the failure to claim or further claim subject matter disclose [sic]
in the specification pertaining to circuitry in a conference

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component of a member of a first teleconference call for
merging the first teleconference call with a second
teleconference call.

Present Appl’n, Decl. filed May 28, 2004.
19. On November 18, 2008, the Examiner rejected claims 16-63 over
(1) a defective reissue declaration under § 251 since none of the then-
pending claims were related to merging teleconference calls, and (2)
obviousness-type double patenting. Various claims were also rejected over
cited prior art references. Non-Final Rej. mailed Nov. 18, 2008.
20. On March 18, 2009, Appellant filed an unsigned reissue
declaration that referenced reissue application number 10/857,799 (the
present application). This declaration identified at least one error upon
which the reissue was based as follows:
This is a broadening reissue application. At least one error
being relied upon as the basis for reissue is the failure to claim
or further claim subject matter disclosed in the specification
pertaining to establishing a media session.

Present Appl’n, Decl. filed Mar. 18, 2009.
21. On March 18, 2009, Appellant filed an amendment that, among
other things, (1) amended independent claims 16, 37, 58, and 62, and (2)
added independent claim 64 reciting a method for establishing a media
session. In pertinent part, (1) claim 16 was amended to call for establishing
a communication session, and (2) claims 58 and 62 were amended to recite
establishing a media session. Present Appl’n, Amd’t filed Mar. 18, 2009.
22. Independent claim 64 added by Appellant’s March 18, 2009
amendment is identical to claim 64 on appeal. Claim 64 is substantially
similar to claim 16 except that (1) a media session is established, and (2)
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identified “transport capabilities” are used as the basis for establishing the
media session instead of “communication capabilities.” Present Appl’n
Amd’t filed Mar. 18, 2009.
23. Appellant’s remarks accompanying the present application’s
amendment filed March 18, 2009 indicate that support for the amendment of
claim 16 “can be found in the specification of the issued patent at, for
example, column 23, lines 8-24, and FIGS. 35A and 35B.” Remarks
Accompanying Present Appl’n Amd’t, filed Mar. 18, 2009, at 12. Appellant
also refers to (1) column 3, lines 54-63, and (2) column 4, lines 33-41 as
support for the amendments to claims 58 and 62. Id. at 15-16. Additionally,
Appellant refers to (1) column 6, lines 37-65, and (2) column 8, line 54 to
column 9, line 20 as support for then-newly-added claim 64. Id. at 18.
24. On April 2, 2009, Appellant filed a reissue declaration
substantially identical to the declaration filed March 18, 2009 (see FF 20)
which Appellant signed on March 23, 2009. Present Appl’n, Decl. filed
Apr. 2, 2009.
25. Following further prosecution, the Examiner finally rejected
claims 16-64 under § 251 for impermissibly broadening the originally-
patented claims beyond the two-year statutory period, and Appellant
appealed that decision. Present Appl’n, Final Rej. mailed Dec. 23, 2009;
Notice of Appeal filed Mar. 12. 2010.

ANALYSIS
This appeal, like the related appeals in Staats and Kelly, presents us
with a novel issue which hinges on one fundamental question: Can a
continuing reissue application broaden patented claims beyond the statutory
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two-year period in a manner unrelated to the broadening aspect that was
identified within the two-year period? Put another way, is it enough under
the law to merely present an intent to broaden that is limited to a particular
aspect (e.g., a particular embodiment of the invention) within the two-year
period, yet broaden in unforeseeable ways (e.g., pertaining to other unrelated
aspects or other embodiments) outside the two-year period?
To answer these questions, we first turn to the statute. Section 251
governs reissuing defective patents “deemed wholly or partly inoperative or
invalid . . . by reason of the patentee claiming more or less than he had a
right to claim in the patent . . . .” 35 U.S.C. § 251, ¶ 1. Although this statute
is “remedial in nature,” and “based on fundamental principles of equity and
fairness, . . . not every event or circumstance that might be labelled ‘error’ is
correctable by reissue.” In re Weiler, 790 F.2d 1576, 1579 (Fed. Cir. 1986).
Notably, the statute mandates that “[n]o reissued patent shall be granted
enlarging the scope of the claims of the original patent unless applied for
within two years from the grant of the original patent.” 35 U.S.C. § 251, ¶ 4
(emphasis added).
This two-year limit codifies a long-standing equitable doctrine of
laches applied to broadening reissue applications,7 and ensures that the
public is timely notified of the intention to broaden patented claims. See In
re Graff, 111 F.3d 874, 877 (Fed. Cir. 1997). Notice is critical since the
potential expansion of the patentee’s patent rights via reissue likewise
affects the public’s rights in an increased likelihood of infringing that
expanded scope, notwithstanding the intervening rights provisions of § 252.

7 P.J. Federico, Commentary on the New Patent Act, 35 U.S.C.A. § 1 (West
1954), reprinted in 75 J. Pat. & Trademark Off. Soc’y 161, 205 (1993).
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See 35 U.S.C. §§ 271 and 252. The reissue statute therefore “balances the
purpose of providing the patentee with an opportunity to correct errors of
inadequate claim scope, with the public interest in finality and certainty of
patent rights.” Graff, 111 F.3d at 877 (citation omitted). As such, the
“public is entitled to rely on the absence of a broadening reissue application
within two years of grant of the original patent.” Id.
In this appeal, the original ‘977 patent issued with two independent
claims directed to a method and apparatus for optimizing transmitting data to
plural second endpoints including, in pertinent part: (1) a first endpoint (a)
activating a multicast communication channel with a first multicast address,
and (b) commencing broadcasting data over a multicast channel; (2) the first
endpoint transmitting a request message to each second endpoint to query
whether they can receive transmissions broadcast to the first multicast
address; (3) certain second endpoints transmitting an acknowledgment
message that is received by the first endpoint; (4) deactivating a point-to-
point channel with the certain second endpoints for each received
acknowledgment message; and (5) terminating the broadcast of data and the
multicast communication channel if at least two second endpoints do not
transmit positive acknowledgement messages. FF 2.
Two years after the original patent issued, Appellant filed a
broadening reissue application (i.e., the parent application). FF 4. Despite
some technical defects with this filing, it was nonetheless considered to be
timely. Id. Although the originally-filed reissue declaration in the parent
application did not specify the particular error to be corrected, the
declaration nonetheless indicated that the application was a broadening
reissue. FF 6. And as Appellant indicates (Br. 7-8, 10), the originally-filed
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declaration was accompanied by a preliminary amendment that broadened
the last clause of patented claim 1’s method of optimizing transmitting data
to plural second endpoints involving, among other things, (1) a multicast
communication channel, and (2) deactivating a point-to-point channel with
certain second endpoints. FF 2, 4-5. That is, this amendment changed
patented claim 1’s termination condition to no longer require at least two
second endpoints to not transmit positive acknowledgment messages (i.e.,
the patented version), in lieu of a more general requirement of satisfying a
“predetermined condition” regarding the second endpoints’ acknowledgment
messages. Id. Notably, in the remarks accompanying this amendment,
Appellant refers to passages and figures in the ‘977 patent pertaining to an
optimization process that converts point-to-point connections to multicast
connections for a teleconference if multiple participants support multicast
address broadcast capabilities. See FF 3, 7.
The clear import of this prosecution history when considered in its
entirety is that Appellant’s originally-filed broadening reissue application
(i.e., the parent application) was intended to correct errors pertaining to a
disclosed optimization process converting point-to-point connections to
multicast connections for a teleconference if multiple participants supported
multicast address broadcast capabilities. See id.8 That Appellant’s further

8 Notably, Appellant later (1) filed another reissue declaration in the parent
application (i.e., more than two years after the original patent’s issuance)
specifying the failure to claim a different aspect of the disclosed invention,
namely merging teleconference calls, and (2) added claims directed to that
aspect. FF 8-10. Appellant, however, later cancelled these claims
responsive to a restriction requirement, and submitted another reissue
declaration that specified an error commensurate with that corrected by the
parent application’s preliminary amendment. See FF 11; see also FF 5.
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correction of errors throughout prosecution of the parent application
pertained to this aspect of the disclosed invention (see FF 11-14) only
bolsters this conclusion.
But over four years after the original patent’s issuance, in the present
application, Appellant seeks to broaden the originally-patented claims in a
manner germane to an aspect unrelated to the broadening intended within the
two-year statutory period—a broadening not mentioned in, or consistent
with actions taken in connection with, the parent reissue application.
Compare FF 15-24 with FF 4-13. That the cited passages in the ‘977 patent
that are said to support the various claimed features in the parent reissue
application and present application are substantially different is telling in
this regard.9
Simply put, the broadening in the present reissue application (i.e.,
pertaining to establishment of a media session as claimed) is in a manner
that was completely unforeseeable by the public within the two-year period
following the original patent’s issuance.10 Despite Appellant’s arguments to
the contrary (Br. 7-10), permitting such an unforeseeable broadening over
four years after Appellant’s original patent issued11 simply runs counter to

9 Compare FF 7, 10, 13 (citing particular passages in the ‘977 patent to
support various claims in the parent application) with FF 17, 23 (same for
present application). But see Br. 3-5 (citing different passages as supporting
various features of the independent claims on appeal in the Brief’s
“Summary of the Claimed Subject Matter” section).
10 Cf. Staats, 2010 WL 1725728, at *8 n.11 (citing oral hearing transcript
noting the admitted unforeseeability of the nature of the broadening in that
case).
11 See FF 15-18 (indicating that May 28, 2004 was when Appellant first
indicated the intention to broaden claims directed to the particular aspect in
by (1) adding claims 16-63 of the present reissue application, and (2) the
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the underlying public notice function of § 251—notice that must be timely to
ensure meaningful reliance on the finality and certainty of patent rights.
See Graff, 111 F.3d at 877.
Unreasonable delays in broadening patented claims undercut this
fundamental public reliance. As the Supreme Court indicates, “[e]very
independent inventor, every mechanic, every citizen, is affected by such
delay, and by the issue of a new patent with a broader and more
comprehensive claim.” Miller v. Brass Co., 104 U.S. 350, 355 (1881). And
“[t]he granting of a reissue for such a purpose, after an unreasonable delay,
is clearly an abuse of the power to grant reissues, and may justly be declared
illegal and void.” Id. Thus, for broadening reissues, “the rule of laches
should be strictly applied; and no one should be relieved who has slept upon
his rights, and has thus led the public to rely on the implied disclaimer
involved in the terms of the original patent.” Id. at 356.
Here, Appellant chose not to broaden the patented claims in a manner
directed to the particular session-establishment aspect recited in the appealed
claims within the two-year statutory period, but instead waited over four
years after Appellant’s original patent issued to indicate the intention to
broaden in this manner. See FF 2-16. In short, the claims broadened in the
present continuation reissue application are unrelated to the broadening

accompanying statements identifying support in the patent for these added
claims). But see FF 18 (noting Appellant’s filing a copy of a declaration
submitted in the parent application in the present application specifying that
the error pertained to merging teleconference calls). Compare FF 8.
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presented during the statutory two-year time period. Since we find this
broadening completely unforeseeable by the public within the two-year
statutory period, it runs counter to the public notice function underpinning
§ 251 and is therefore improper.12
To hold otherwise would effectively give Appellant a license to
unforeseeably shift from one invention to another via reissue well beyond
the two-year statutory period. This tactic undermines the public notice
function of § 251 and exacerbates uncertainty regarding the scope of patent
protection on which the public can reasonably rely—particularly for patents
with large numbers of disclosed embodiments.13
The key cases pertaining to broadening reissues do not change our
conclusion. In In re Doll, 419 F.2d 925 (CCPA 1970), a reissue application
was timely filed less than two years after the original patent issued adding
broader claims (claims 20-31). Id. at 926. Over two years later, however,
four additional broader claims were added (claims 32-35 copied from
another patent). Id. Two years later, claims 32-35 were amended, and two
additional broader claims (claims 42 and 43) were added. Id. Notably,

12 Cf. Staats, 2010 WL 1725728, at *8 n.11 (citing oral hearing transcript
noting the admitted unforeseeability of the nature of the broadening in that
case).
13 See id. at *9 n.14 (citing oral hearing questioning whether the public could
have foreseen filing a broadening continuing reissue application for a 90th
embodiment beyond the two-year statutory period for a hypothetical
application containing 100 embodiments, where the applicant intended to
broaden claims to just a first embodiment within the two-year period).
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claims 32-35, 42, and 43 were not only broader than the claims originally
submitted in the reissue application (including claims 20-31 added in that
application), they were also presented well after the two-year statutory
period. Id.
This broadening was permissible under § 251 since the public was
notified of the patentee’s intention to broaden the claims within the two-year
period via the reissue application, and the statute did not preclude further
broadening beyond the two-year period during the course of prosecution. Id.
Accord Graff, 111 F.3d at 877. In reaching this conclusion, the Doll court
emphasized that § 251 permits broadening patented claims if “applied for”
(i.e., an application is filed) within two years from the original patent’s
grant. Doll, 419 F.2d at 928. The court also noted that the intervening rights
provisions of § 252 provide adequate safeguards to the public in this
circumstance. Id.
But a key fact in Doll distinguishes it from the present appeal. The
reissue oath in Doll referred specifically to correcting errors via broadening
pertaining to a particular embodiment, namely the embodiment of Figure 4
of the original patent. Id. at 927-28.14 Claims 20-31 were therefore added
via reissue for that purpose. See id. Notably, it was undisputed that later-
added claims 32-35, 42, and 43 were broader than claims 20-31 and, like
claims 20-31, pertained to the embodiment of Figure 4. Id.

14 Accord In re Wittry, 489 F.2d 1299, 1302 (CCPA 1974) (noting that “the
reissue oath [in Doll] stated that none of the patent claims afforded
protection to a specified embodiment of the invention covered by the new
reissue claims.”) (emphasis added).
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Although the Doll court held that this broadening beyond the two-year
statutory period was permissible, the broadening nevertheless pertained to
the specific embodiment identified in the original reissue oath.15 To the
extent that this distinction was addressed in Doll in connection with
determining whether the reissue oath was adequate,16 it is of no consequence
here, for the fact remains that the broader claims filed beyond the two-year
statutory period in Doll were commensurate with the embodiment identified
in the original reissue oath. See Doll, 419 F.2d at 927-28. As such, in Doll,
the public was seasonably notified of the manner in which the claims would
be broadened (i.e., with respect to the embodiment of Figure 4), although
this broadening occurred beyond the two-year statutory period.17
This timely notice, however, does not exist in the present appeal.
Unlike Doll, Appellant seeks to broaden the patented claims in the present
reissue application in a manner unrelated to that specified in the originally-
filed reissue declaration—a broadening totally unforeseeable to the public
when that declaration was filed over two years earlier. Compare FF 16 with
FF 5. As noted previously, since this practice runs counter to the public
notice function of § 251, it is improper under that statute.
To be sure, the agency rule governing reissue declarations does not
require specifying all errors to be corrected via reissue. Rather, reissue
declarations need only specify “at least one error being relied upon as the

15 Cf. Staats, 2010 WL 1725728, at *10 n.16 (acknowledging a similar
distinction at the oral hearing in the related Staats appeal).
16 See also id., at *10 n.16 (addressing similar issue).
17 See also Buell v. Beckestrom, 22 USPQ2d 1128, 1131-32 (BPAI 1992)
(non-precedential) (holding that § 251 did not preclude presenting claims via
a timely-filed divisional reissue application after the two-year statutory
period that were broader than the patented claims).
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basis for reissue.” 37 C.F.R. § 1.175(a)(1) (emphasis added). A similar
provision exists for continuing reissue applications.18 Despite their breadth,
however, these provisions must be interpreted in light of the critical public
notice function for broadening reissue applications underpinning § 251. As
such, the rules cannot circumvent this statutory mandate, but should be read
consistent with the statutory mandate.
Moreover, the Manual of Patent Examining Procedure notes, quite
broadly, that “[w]here any intent to broaden is unequivocally indicated in the
reissue application within the two years from the patent grant, a broadened
claim can subsequently be presented in the reissue after the two year
period.” MPEP § 1412.03(IV), 8th ed., Rev. 7, July 2008 (emphases added).
The MPEP further explains that “a broadened claim may be presented in a
reissue application after the two years, even though the broadened claim
presented after the two years is different than the broadened claim presented
within the two years.” Id. (emphasis added).
Appellant seizes upon this ambiguous expansive language in the
MPEP to support the contention that the MPEP permits broadening claims in
any manner after two years so long as “any intent to broaden” was presented
within two years which, according to Appellant, has been done. Br. 7-8
(emphasis added). To be sure, the MPEP seemingly indicates as much given
this broad language. But as Appellant indicates (Br. 7), the MPEP qualifies
this broad language by mandating that “any intent to broaden” must be

18 See 37 C.F.R. § 1.175(e) (noting that continuing reissue applications
require identifying “at least one error in the original patent which has not
been corrected by the parent reissue application or an earlier reissue
application”) (emphasis added).
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“unequivocally indicated”—a requirement not satisfied by merely stating
that the patent is inoperative by claiming “more or less” that applicant had a
right to claim. MPEP § 1412.03.19
Considering the MPEP passage as a whole, the added qualification
could merely pertain to ensuring that the declaration was “unequivocal” with
respect to articulating the intent to broaden generally (as opposed to
narrowing), and not pertain to the specific manner of the broadening. But
even assuming, without deciding, that this is the case, we still are
unconvinced that the law permits broadening patented claims in a completely
unforeseeable manner after two years as Appellant has done here,
particularly when considering the MPEP together with the reissue statute
and its crucial public notice function.
Section 251 provides that “the Director may issue several reissued
patents for distinct and separate parts of the thing patented . . . .” 35 U.S.C.
§ 251, ¶ 2 (emphases added). This provision has been interpreted as
enabling—not limiting—to ensure that applicants are not placed under any
greater burden regarding divisional or continuation reissue applications as

19 The July 2008 revision of MPEP § 1412.03 contains an important revision
that mandates unequivocally indicating an intent to broaden. That is, the
MPEP notes that “[w]here any intent to broaden is unequivocally indicated
in the reissue application within the two years from the patent grant, a
broadened claim can subsequently be presented in the reissue after the two
year period.” See MPEP § 1412.03 (emphasis added). The latest revision of
the MPEP also adds the following: “(Note: A statement that ‘the patent is
wholly or partly inoperative by reason of claiming more or less that
applicant had a right to claim’ is NOT an unequivocal statement of an intent
to broaden.” See id. These revisions were noted at the oral hearing in
connection with the related Staats appeal. Staats, 2010 WL 1725728, at *11
n.20.
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compared to divisions and continuations of original applications, so long as
the statutory requirements specific to reissue applications are met. Graff,
111 F.3d at 876-77.
That is, the requirements for continuation and divisional reissue
applications are commensurate with those for continuation and divisional
applications for original applications, with the added requirement that the
statutory reissue requirements must also be met. See id. A divisional
application is filed to cover a particular invention that is independent or
distinct from other inventions that are claimed in one application. See
35 U.S.C. § 121. “A continuation application is a second application for the
same invention claimed in a prior nonprovisional application and filed
before the prior application becomes abandoned or patented.” MPEP
§ 201.07 (emphasis added). Both applications, however, can claim the
benefit of the filing date of their respective original applications. See
35 U.S.C. §§ 120 and 121.
This distinction between divisional and continuation applications
applies as well to reissue applications. See Graff, 111 F.3d at 876-77. As
noted above, § 251 enables the issuance of “several reissued patents for
distinct and separate parts of the thing patented . . . .” 35 U.S.C. § 251, ¶ 2
(emphases added). But continuation reissue applications are not ordinarily
filed “for distinct and separate parts of the thing patented” as called for in
this section. MPEP § 1451(II). Rather, the “distinct and separate parts of
the thing patented” are more commensurate with independent and distinct
inventions that would be appropriate for divisional reissue applications.
See MPEP § 1451(I).
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Inventions are distinct if (1) the inventions as claimed are not
connected in at least one of design, operation, or effect, and (2) at least one
invention is patentable (novel and nonobvious) over the other. MPEP
§ 803(II). But when claims define the same essential characteristics of a
single disclosed embodiment of an invention, the “claims are not directed to
distinct inventions; rather they are different definitions of the same disclosed
subject matter, varying in breadth or scope of definition.” MPEP § 806.03.
While § 251, ¶ 2 permits reissue applications for “distinct and separate
parts of the thing patented” (i.e., independent and distinct inventions), the
other statutory requirements for reissue applications must still nevertheless
be met. See Graff, 111 F.3d at 876-77. And these other requirements
include “applying for” such an independent and distinct invention via a
reissue application (e.g., a divisional reissue application) within two years of
the original patent’s grant. See 35 U.S.C. § 251, ¶ 4; see also Doll, 419 F.2d
at 928.
In the present reissue application, independent claim 16 calls for, in
pertinent part, a method for establishing a communication session
comprising “(a) identifying communication capabilities to an endpoint; (b)
notifying said endpoint of the desire to connect; (c) receiving, from the
endpoint, notification of confirmation to connect; and (d) establishing the
session according to said communication capabilities.” FF 16. Claims 37
and 58 of this amendment recite a method and apparatus with similar
limitations, except that the limitations corresponding to steps (a)-(c) above
involve separate messages. Id. Claim 62 recites an apparatus with similar
functionality, but further recites (1) first and second messages including first
and second media session capabilities, respectively, along with respective
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desires to connect; (2) a communication confirmation circuit’s transmitting a
third message to notify the endpoint of confirmation to connect; and
(3) a communication establishment circuit for establishing the media session
according to either the first or second capabilities responsive to an
endpoint’s response to the first message. Id.
Even assuming, without deciding, that these features could somehow
tangentially implicate some aspects of the technique that optimizes
transmitting data to plural second endpoints recited in the patented claims
(see FF 2) (a finding that has not been made on this record in any event),
Appellant has nonetheless waited over four years after the original patent
issued to indicate the intention to broaden in an unforeseeable manner in the
present reissue application (see FF 15-24)—an unreasonable delay.20
The U.S. Supreme Court all but said as much in Webster Elec. Co. v.
Splitdorf Elec. Co., 264 U.S. 463 (1924). There, a divisional application was
filed approximately five years after the parent application was filed in
February 1910, but before the parent application issued in 1916. Id. at 464.
In June of 1918, however, an amendment was filed in the divisional
application adding broader claims that were later patented. Id. at 464-65.
Notably, the broadened claims added via this amendment were first
presented to the Patent Office eight years and four months after the original
application was filed. Id. at 465.

20 We note in passing that the mere failure to file a divisional application on
disclosed, but unclaimed patentably distinct inventions during prosecution is
not an error correctable by reissue. See Weiler, 790 F.2d at 1581-83; see
also In re Mead, 581 F.2d 251 (CCPA 1978). Similarly, deliberately failing
to file continuing applications to cover disclosed but unclaimed subject
matter in the original application is likewise uncorrectable via reissue. See
In re Serenkin, 479 F.3d 1359, 1362-63 (Fed. Cir. 2007).
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The Court held this delay was unreasonable, noting that the patentee
“Kane did not originally intend to assert these amended claims, because he
considered their subject-matter one merely of design and not of invention,
and the inference is fully warranted that the intention to do so was not
entertained prior to 1918.” Id. The Court noted that during all of this time,
the subject matter of the broadened claims “was disclosed and in general
use, and Kane and his assignee . . . simply stood by and awaited
developments.” Id. This was not, however, “the simple case of a division of
a single application for several independent inventions, . . . but [rather] a
case of unreasonable delay and neglect on the part of the applicant and his
assignee in bringing forward claims broader than those originally sought.”
Id. at 465-66 (emphases added).
In reaching its decision, the Court relied heavily on equitable
principles, particularly as they applied to delays in correcting errors via
reissue applications,21 and adopted a similar two-year time limit for
divisional applications. Id. at 471. Although the Court later held that
Webster’s presumptive two-year time limit was dictum, the Court
nevertheless “ratified prosecution laches as a defense to infringement actions
involving new claims issuing from divisional and continuing applications
that prejudice intervening adverse public rights.” Symbol Techs., Inc. v.
Lemelson Med., Educ. & Res. Found., 277 F.3d 1361, 1364 (Fed. Cir. 2002)
(citing Crown Cork & Seal Co. v. Ferdinand Gutmann Co., 304 U.S. 159
(1938) and Gen. Talking Pictures Corp. v. W. Elec. Co., Inc., 304 U.S. 175

21 See Webster, 264 U.S. at 466-69 (discussing cases adopting an equitable
two-year time limit to correct errors via broadening reissue applications).
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(1938)). That is, the Court ratified the doctrine of prosecution laches in
Crown Cork and General Talking Pictures, but did not apply it in those
cases in the absence of intervening rights.
But broadening patented claims via reissue by its very nature
prejudices intervening adverse public rights since the public is entitled to
rely on the patentee’s rights that existed before the patent’s error was
corrected (i.e., before the broadening). See 35 U.S.C. § 252. Therefore, the
doctrine of prosecution laches is particularly applicable in reissue. Indeed,
these very equitable principles were codified in 35 U.S.C. §§ 251 (reissue
statute) and 252 (intervening rights regarding reissued patents).
Webster is therefore analogous to the present reissue application.
Like the divisional application in Webster, the present reissue application
was filed such that it was copending with its parent reissue application (see
FF 4, 14-15). That is, both the divisional application in Webster and the
present reissue application were timely filed in terms of their copendency
with their respective parent applications to obtain the benefit of the earlier-
filed applications. See 35 U.S.C. §§ 120 and 121.
But mere continuity to the parent application under §§ 120 and 121 is
not enough to foreclose the doctrine of prosecution history laches in a
manner commensurate with the delay in Webster. See In re Bogese, 303
F.3d 1362, 1367 (Fed. Cir. 2002) (citing Webster as an example of
prosecution history laches). Where, as here, Appellant waited over four
years after the original patent issued to indicate the intention to broaden
patented claims in a manner unrelated to that originally contemplated in the
parent reissue application (compare FF 4-13 with FF 15-24), we see no
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reason why this situation should be treated any differently than Webster. In
this circumstance, the public can reasonably infer that Appellant had no such
intention and therefore dedicated this subject matter to the public.22
To hold otherwise would eviscerate the public notice function of
§ 251 by essentially giving patentees a license to unforeseeably shift from
one invention to another via reissue well beyond the two-year statutory
period. This tactic not only exploits latent subject matter that is reasonably
presumed to be dedicated to the public by Appellant’s own actions, but also
circumvents the countervailing public reliance interest in the certainty and
finality in patent rights guaranteed by the two-year statutory period. See
Graff, 111 F.3d at 877.
For the foregoing reasons, we are not persuaded of error in the
Examiner’s rejection of claims 16-64 under 35 U.S.C. § 251. Therefore, we
sustain the Examiner’s rejection of those claims.

CONCLUSION
The Examiner did not err in rejecting claims 16-64 under § 251.

ORDER
The Examiner’s decision rejecting claims 16-64 is affirmed.

22 See Sontag Chain Stores Co., Ltd. v. Nat’l Nut Co. of Cal., 310 U.S. 281,
291 (1940) (“[D]ue diligence must be exercised in discovering the mistake
in the original patent, and that, if . . . sought for the purpose of enlarging the
claim, the lapse of two years will ordinarily, though not always, be treated as
evidence of an abandonment of the new matter to the public . . . .”)
(quotation marks and citation omitted).

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

pgc

APPLE/FENWICK
SILICON VALLEY CENTER
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