Ex Parte Sacca

Board of Patent Appeals and Interferences

Dec 12, 2007

10837531 (B.P.A.I. Dec. 12, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte FRANK SACCA
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Appeal 2007-0027
Application 10/837,531
Technology Center 2600
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Decided: December 12, 2007
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ORDER DISMISSING APPEAL
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STATEMENT OF CASE
Appellant appealed under 35 U.S.C. §134 from a final rejection of
claims 23-45. The Board of Patent Appeals and Interferences have
jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF FACTS
1) U.S. Patent No. 6,380,967 was issued on April 30, 2002, based on
application 08/762,884, which was filed on December 7, 1996.
2) Appellant filed this reissue application on U.S. Patent No. 6,380,967
on April 23, 2004.
3) On October 20, 2005, the Examiner mailed a Final Rejection of
claims 23-45.
Appeal No. 2007-0027
Application Number 10/837,531

4) On November 11, 2005, Appellant filed a Notice of Appeal.
5) On January 26, 2006, Appellant filed an Appeal Brief.
6) On April 18, 2006, the Examiner mailed an Examiner’s Answer to
Appellant.
7) On May 31, 2006, U.S. Patent 6,380,967 expired for failure to pay the
maintenance fee due 4 years after issuance of the patent.
8) On June 13, 2006 Appellant filed a Reply Brief.
9) On August 23, 2006, the Examiner mailed a communication,
considering the Reply Brief.
10) On October 26, 2006, the Board of Patent Appeals and
Interferences (Board) mailed a Docketing Notice to Appellant.
ISSUE(S)
If the underlying U.S. Patent has expired, should the appeal be
dismissed?
PRINCIPILES OF LAW
As can be seen by 35 U.S.C. §251, first paragraph, which states:
“Whenever any patent is, through error without any deceptive
intention, deemed wholly or partly inoperative or invalid, by
reason of a defective specification or drawing, or by reason of
the patentee claiming more or less than he had a right to claim
in the patent, the Director shall, on the surrender of such patent
and the payment of the fee required by law, reissue the patent
for the invention disclosed in the original patent, and in
accordance with a new and amended application, for the
unexpired part of the term of the original patent. No new
matter shall be introduced into the application for reissue.”
(Emphasis added).

As can be seen from the statement of facts, U.S. Patent 6,380,967
expired on May 31, 2006 for failure to pay the maintenance fees. Once the
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Appeal No. 2007-0027
Application Number 10/837,531

patent had expired, the United States Patent and Trademark Office no longer
had the authority to reissue the patent. See In re Morgan 990 F.2d 1230,
1231 (Fed. Cir. 1993) “The language of section 251 is unambiguous: the
[Director] has authority to reissue a patent only “for the unexpired part of the
term of the original patent.” In addition, it is also noted that the Board in Ex
parte Kumagai, 9 USPQ2d 1642, 1646 (BPAI 1988) states: “There being no
unexpired term remaining, reissue can no longer be had and the question of
the patentability of the instant claims under 35 U.S.C. 102 or 103, in this
application . . . is moot.”
The Manual of Patent Examining Procedure (MPEP) in § 1415.01
(Rev. 5, Aug. 2006) states:
The filing of a reissue application does not alter the
schedule of payments of maintenance fees on the original
patent. If maintenance fees have not been paid on the original
patent as required by 35 U.S.C. 41(b) and 37 CFR 1.20, and the
patent has expired, no reissue patent can be granted. 35 U.S.C.
251, first paragraph, only authorizes the granting of a reissue
patent for the unexpired term of the original patent. Once a
patent has expired, the Director of the USPTO no longer has the
authority under 35 U.S.C. 251 to reissue the patent. See In re
Morgan, 990 F.2d 1230, 26 USPQ2d 1392 (Fed. Cir. 1993).
ANALYSIS
It is clear from the written record that U.S. Patent No. 6,380,967 has
expired for failure to pay the maintenance fees due four years from the date
of issuance. Based upon all pertinent legal considerations, any appeal of a
reissue application based on an expired patent must be dismissed.
DECISION
That due to expiration of U.S. Patent No. 6,380,967, for failure to pay
the maintenance fees the appeal of claims 23-45 is hereby Dismissed. The
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Appeal No. 2007-0027
Application Number 10/837,531

application is being returned to the Examiner, for the Examiner to comply
with the requirements of MPEP § 1415.01.
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).

BOARD OF PATENT APPEALS
AND INTERFERENCES

By: ______________________________
Dale M. Shaw
Chief Appeal Administrator
(571) 272-9797

DMS

clj
FRANK SACCA
2306 RIO LOBOS ROAD
DIAMOND BAR, CA 91765

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