Paul Morgavi

Patent Trials and Appeals Board

Nov 22, 2019

13792636 - (D) (P.T.A.B. Nov. 22, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/792,636 03/11/2013 Paul Morgavi 1032326-000594 7982
21839 7590 11/22/2019
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
RIMELL, SAMUEL G
ART UNIT PAPER NUMBER
3992
NOTIFICATION DATE DELIVERY MODE
11/22/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAUL MORGAVI
____________

Appeal 2018-007998
Reissue Application 13/792,636
Patent 7,286,257 B1
Technology Center 3900
____________

Before JOHN A. JEFFERY, RAE LYNN P. GUEST, and ERIC B. CHEN,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 27–31, 34–37, 39, 40, 47–59, 61–75, 78–92, and
94–104. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Gemalto SA.
Appeal Br. 2.
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STATEMENT OF THE CASE
Appellant seeks to reissue U.S. Patent 7,286,257 B1 (“’257 patent”)
directed to a printing machine with a jet printing head and controller to (1)
perform ink jet printing on particular areas on the surface of a medium, such
as a card, and (2) avoid printing on other areas, such as a card’s margin or
magnetic strip. See generally Abstract; col. 3, l. 65–col. 4, l. 47; col. 5, ll. 4–
10. Claim 27 is illustrative:
27. A method for printing on a medium, comprising the
steps of:
capturing image data of the medium:
analyzing or interpreting said captured image data in
order to measure geometric and/or positioning parameters of the
medium and/or to detect at least one feature of the medium, and
printing on the medium or positioning the printing, in
accordance with said geometric and/or positioning parameters
and/or detected feature of the medium.

THE REJECTIONS
The Examiner rejected claims 27–31, 34–37, 39, 40, 47–59, 61–75,
78–92, and 94–104 under 35 U.S.C. § 251 as being broadened in a reissue
application outside the two-year statutory period. Final Act. 6.2
The Examiner rejected claims 27–31, 34–37, 39, 40, 47–59, 61–75,
78–92, and 94–104 under 35 U.S.C. § 102(b) as anticipated by Morgavi (US
7,286,257 B1; issued Oct. 23, 2007).3 Final Act. 7.

2 Throughout this opinion, we refer to (1) the Final Office Action mailed
September 1, 2017 (“Final Act.”); (2) the Appeal Brief filed March 1, 2018
(“Appeal Br.”); (3) the Examiner’s Answer mailed June 1, 2018
(supplemented July 18, 2018) (“Ans.”); and (4) the Reply Brief filed August
1, 2018 (“Reply Br.”).
3 This is also the patent for which reissue is sought.
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The Examiner rejected claims 27–31, 39, 48–57, 61–63, 68–75, 78–
80, 84–92, 94–96, and 99–104 under 35 U.S.C. § 102(b) as anticipated by
Elgar (US 2004/0160624 Al; published Aug. 19, 2004). Final Act. 7–22.
The Examiner rejected claims 58 and 59 under 35 U.S.C. § 103 as
unpatentable over Elgar. Final Act. 22–23.
The Examiner rejected claims 47 and 64–67 under 35 U.S.C. § 103 as
unpatentable over Elgar and Klinefelter (US 6,694,884 B2; issued Feb. 24,
2004). Final Act. 23–24.
The Examiner rejected claims 34–36, 81–83, 97, and 98 under 35
U.S.C. § 103 as unpatentable over Elgar and Houmeau (US 2005/0117053
Al; published June 2, 2005). Final Act. 24–29.
The Examiner rejected claim 37 under 35 U.S.C. § 103 as
unpatentable over Elgar, Houmeau, and Nioche (US 5,943,238; issued Aug.
24, 1999). Final Act. 29.
The Examiner rejected claim 40 under 35 U.S.C. § 103 as
unpatentable over Elgar, Houmeau, and Hatayama (US 7,614,723 B2; issued
Nov. 10, 2009). Final Act. 29–30.

THE § 251 REJECTION
The Examiner finds that the present reissue application improperly
broadens the patented claims beyond the two-year statutory period. Final
Act. 6. According to the Examiner, because of various defects in six related
applications4 that were filed in a chain of priority in an attempt to reissue the

4 Although the Examiner lists seven applications that were filed after the
’257 patent issued (Ans. 4), the last application listed, namely Application
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’257 patent—defects that rendered those applications incomplete—the
earliest of those applications, namely U.S. Application 12/436,571 (“’571
application”), is not a reissue application, but rather a regular continuation
application under In re Bauman, 683 F.2d 405 (CCPA 1982). Ans. 8.
Because there were no other reissue applications filed before this “Bauman-
type” continuation application, the Examiner reasons that the other
applications filed after the ’571 application—including the present
application—cannot be reissue applications, but rather are “Bauman-type”
continuation applications subject to the requirements of 35 U.S.C. § 120.
Ans. 8–13. The Examiner adds that because the filing fee was not paid in
one of the applications in the priority chain, namely U.S. Application
13/167,096 (“’096 application”), the present application’s effective filing
date cannot extend earlier than January 11, 2012—the filing date of the
subsequent copending application in the priority chain, namely U.S.
Application 13/348,086 (“’086 application”).5 Thus, the Examiner further
rejected all claims over intervening prior art after the filing date of the ’257
patent and after the filing date of the ’571 application, including the ’257
patent itself.
Appellant argues that, despite various defects, the ’571 application is
nonetheless a broadening reissue application given the filing of (1) the

No. 13/792,636, is the present application. Therefore, there are six
applications related to the present application that were filed after the ’257
patent issued.
5 Although the Examiner finds that the present application’s effective filing
date is March 11, 2013 on page 6 of the Final Office Action, the Examiner
nonetheless finds that the effective filing date is January 11, 2012 on pages 5
and 13 of the Answer.
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assignee’s written consent indicating the patentee’s accepting reissue
restrictions at filing, and (2) broadened claims indicating unequivocally an
intent to broaden the patented claims within the statutory period. Reply Br.
2–4. Appellant adds that because other applications in the priority chain
were each filed with indicia of a continuation reissue application, namely (1)
a specification in double column reissue format; (2) amendments in proper
format; and (3) statements of assignee ownership and consent, the
applications should therefore be treated as such consistent with USPTO
policy. Appeal Br. 15–17; Reply Br. 2–5. Appellant adds that, contrary to
the Examiner’s assertion, the ’096 application’s filing fee was paid while
that application was pending. Reply Br. 1–2.

ISSUE
Under § 251, has the Examiner erred in rejecting claims 27–31, 34–
37, 39, 40, 47–59, 61–75, 78–92, and 94–104 by finding that they
impermissibly broaden the patented claims outside the two-year statutory
period? This issue turns on whether (1) the ’571 application is a timely-filed
broadening reissue application, and (2) the other applications in the priority
chain, including the present application, are continuation reissue
applications. To the extent the ’571 application is a timely-filed broadening
reissue application, and all applications in the priority chain, including the
present application, are continuation reissue applications, the present
application would have a priority date of at least September 4, 2001, the U.S.
National phase filing date of the application that issued as the ’257 patent,
thus obviating the prior art rejections based on later intervening prior art.
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ANALYSIS
The ’257 patent, which Appellant seeks to reissue, issued on October
23, 2007. On May 6, 2009, Appellant filed the ’571 reissue application that
included, among other things, (1) a transmittal identifying the application as
a reissue application, (2) a specification and claims in double column patent
format; (3) an amendment adding claims 24 to 61, where these newly-added
claims were underlined; (4) the assignee’s consent “to the filing of the
accompanying application to reissue the patent” with the associated
statement under 37 C.F.R. § 3.73(b); (5) a combined declaration and power
of attorney by the assignee, where the declaration stated, among other
things, that the ’257 patent was partly inoperative due to the patentee
claiming less than it had a right to claim; and (6) a petition to accept the
declaration without the inventor’s signature.6 See ’571 Application, Reissue
Patent Application Transmittal Letter filed May 6, 2009.7
Appellant’s petition in the ’571 application, however, was dismissed
on September 15, 2009, for failing to show that (1) a complete copy of the
application was sent to the inventor, and (2) the registered practitioner who
signed the declaration, James A. LaBarre, was authorized to act on the
assignee’s behalf. See ’571 Application, Petition Decision mailed Sept. 15,

6 The petition asserts that the inventor refused to sign the Declaration for
Reissue Patent Application. See ’571 Application, Petition Under 37 C.F.R.
§ 1.47(b) to Accept Declaration Without Inventor’s Signature filed May 7,
2009.
7 Appellant’s petition is dated May 7, 2009, and was filed that day.
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2009. The ’571 application was abandoned on August 27, 2010 for failure
to reply timely to the petition decision.
Before this abandonment, however, on March 15, 2010, Appellant
filed U.S. Application 12/659,632 (“’632 application”) with a utility
Transmittal of New Application form and an application data sheet
identifying the application as a continuation utility application of the ’571
reissue application. The application further included, among other things,
(1) a specification and claims in double column patent format; (2) an
amendment adding broadened claims 24 to 61, where these newly-added
claims were underlined; and (3) the assignee’s written consent “to the filing
of the accompanying application to reissue the patent” and statement under
37 C.F.R. § 3.73(b). See ’632 Application, Transmittal of New Application
filed Mar. 15, 2010. After the USPTO mailed a Notice to File Missing Parts
of Nonprovisional Application on April 2, 2010 (“’632 Application Missing
Parts Notice”) indicating, among other things, that (1) the statutory basic
filing fee, and (2) the inventor’s oath or declaration were missing, the
application was abandoned on December 20, 2010 for failure to reply timely
or properly to the missing parts notice—an abandonment that was revived on
June 21, 2017.
Before this abandonment, however, on November 2, 2010, Appellant
filed U.S. Application 12/938,313 (“’313 application”) with a utility
Transmittal of New Application form and an application data sheet
identifying the application as a continuation utility application of the ’632
application, and included, among other things, (1) a specification and claims
in double-column patent format; (2) an amendment adding broadened claims
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24 to 61, where these newly-added claims were underlined; and (3) the
assignee’s written consent “to the filing of the accompanying application to
reissue the patent” and statement under 37 C.F.R. § 3.73(b). See ’313
Application, Transmittal of New Application filed Nov. 2, 2010. After the
USPTO mailed a Notice to File Missing Parts of Nonprovisional Application
on November 23, 2010 (“’313 Application Missing Parts Notice”)
indicating, among other things, that (1) the statutory basic filing fee, and (2)
the inventor’s oath or declaration were missing, the application was
abandoned on July 8, 2011 for failure to reply timely or properly to the
missing parts notice—an abandonment that was revived on June 21, 2017.
Before this abandonment, however, on June 23, 2011, Appellant filed
the ’096 application with a utility application transmittal form and an
application data sheet identifying the application as a continuation utility
application of the ’313 application, and included, among other things, (1) a
specification and claims in double column patent format; (2) an amendment
adding broadened claims 24 to 61, where these newly-added claims were
underlined; and (3) the assignee’s written consent “to the filing of the
accompanying application to reissue the patent” and statement under 37
C.F.R. § 3.73(b). See ’096 Application, Transmittal of New Application
filed June 23, 2011. After the USPTO mailed a Notice to File Missing Parts
of Nonprovisional Application on July 11, 2011 (“’096 Application Missing
Parts Notice”) indicating, among other things, that (1) the statutory basic
filing fee, and (2) the inventor’s oath or declaration were missing, the
application was abandoned on May 1, 2012 for failure to reply timely or
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properly to the missing parts notice.8 Revival of the ’096 Application was
not requested.
Before this abandonment, however, on January 11, 2012, Appellant
filed the ’086 application with a utility Transmittal of New Application form
and an application data sheet identifying the application as a continuation
utility application of the ’096 application,9 and included, among other
things, (1) a specification and claims in double column patent format; (2) an
amendment adding broadened claims 24 to 61, where these newly-added
claims were underlined; and (3) the assignee’s written consent “to the filing
of the accompanying application to reissue the patent” and statement under
37 C.F.R. § 3.73(b). See ’086 Application, Transmittal of New Application
filed Jan. 11, 2012; see also ’086 Application Data Sheet filed Jan. 11, 2012.
After the USPTO mailed a Notice to File Missing Parts of Nonprovisional
Application on January 26, 2012 (“’086 Application Missing Parts Notice”)
indicating, among other things, that (1) the statutory basic filing fee, and (2)
the inventor’s oath or declaration were missing, the application was
abandoned on October 22, 2012 for failure to reply timely or properly to the
missing parts notice10—an abandonment that was revived on June 21, 2017.

8 Although a reply to the ’096 Application Missing Parts Notice was
received on January 11, 2012, the reply was deemed incomplete due to,
among other things, a missing oath or declaration. See ’096 Application
Notice of Incomplete Reply mailed Jan. 20, 2012.
9 Although the Transmittal of New Application form filed January 11, 2012
indicates that the ’086 application is a continuation of the ’313 application,
the Application Data Sheet nonetheless indicates that the ’086 application is
a continuation of the ’096 application.
10 Although a reply to the ’086 Application Missing Parts Notice was
received on July 26, 2012, the reply was deemed incomplete due, among
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Before this abandonment, however, on July 26, 2012, Appellant filed
the ’773 application with a utility Transmittal of New Application form and
an Application Data Sheet identifying the application as a continuation
utility application of the ’086 application,11 and included, among other
things, (1) a specification and claims in double column patent format; (2) an
amendment adding broadened claims 24 to 61, where these newly-added
claims were underlined; and (3) the assignee’s written consent “to the filing
of the accompanying application to reissue the patent” and statement under
37 C.F.R. § 3.73(b). See ’773 Application, Transmittal of New Application
filed July 26, 2012; see also ’773 Application Data Sheet filed July 26,
2012. After the USPTO mailed a Notice to File Missing Parts of
Nonprovisional Application on August 10, 2012 (“’773 Application Missing
Parts Notice”) indicating, among other things, that (1) the statutory basic
filing fee, and (2) the inventor’s oath or declaration were missing, the
application was abandoned on April 2, 2013 for failure to reply timely or
properly to the missing parts notice—an abandonment that was revived on
June 21, 2017.
Before this abandonment, however, on March 11, 2013,12 Appellant
filed the present ’636 application with a utility Transmittal of New

other things, a missing (1) oath or declaration, and (2) statutory filing fee.
See ’086 Application Notice of Incomplete Reply mailed August 2, 2012.
11 Although the Transmittal of New Application form filed July 26, 2012
indicates that the ’773 application is a continuation of the ’313 application,
the Application Data Sheet nonetheless indicates that the ’773 application is
a continuation of the ’086 application.
12 Between the filing of the ’773 Application and the present ’636
Application, the Leahy-Smith America Invents Act of September 16, 2011,
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Application form and an application data sheet identifying the application as
a continuation utility application of the ’773 application, and included,
among other things, (1) a specification and claims in double column patent
format; (2) an amendment adding broadened claims 24 to 61, where these
newly-added claims were underlined; and (3) the assignee’s written consent
“to the filing of the accompanying application to reissue the patent” and
statement under 37 C.F.R. § 3.73(b). See ’636 Application, Transmittal of
New Application filed Mar. 11, 2013; see also ’636 Application Data Sheet
filed Mar. 11, 2013. Notably, the present ’636 application Specification was
later amended to identify (1) the ’571 application as a reissue application,
and (2) the later-filed continuing applications—including the present ’636
application—as reissue continuation applications. See Amdt. filed May 7,
2015.

The ’571 application is a broadening reissue application
On this record, we agree with Appellant (Reply Br. 2–4) that the ’571
application is a broadening reissue application—not a regular continuation
application as the Examiner indicates (Ans. 8). First, the ’571 application
was filed on May 6, 2009 to reissue the ’257 patent,13 and was the first in the

became effective on September 16, 2012. The Act amended the declaration
requirement under 35 U.S.C. § 115 such that a statement by an assignee may
be filed where the inventor is under obligation to assign the invention but
has refused to sign an inventor’s oath. See 35 U.S.C. § 115(d)(2)(B); 37
C.F.R. § 1.64 (2017). Thus, a Notice to File Missing Parts in the present
application did not indicate the inventor’s oath or declaration was missing.
13 Accord ’571 Application, Petition Decision mailed Sept. 15, 2009, at 1
(acknowledging this reissue application). See also ’571 Application, Notice
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above-noted series of applications filed after the ’257 patent issued that led
ultimately to the filing of the present application. That is, the ’571
application is simply a reissue application—not a continuation application.
That the ’571 application included, among other things, (1) a
specification and claims in double column patent format; (2) an amendment
adding broadened claims 24 to 61, where these newly-added claims were
underlined; (3) the assignee’s consent to reissue the patent and offer to
surrender the original patent with the associated statement under 37 C.F.R.
§ 3.73(b); (4) a combined declaration and power of attorney by the assignee,
where the declaration stated, among other things, that the ’257 patent was
partly inoperative due to the patentee claiming less than it had a right to
claim as noted previously indicates clearly an intent to broaden the patented
claims via the ’571 reissue application. Moreover, the ’571 application was
filed on May 6, 2009 that is less than two years after the ’257 patent issued
on October 23, 2007, thus satisfying the statutory two-year requirement for
broadening reissue applications. See 35 U.S.C. § 251.
That there were defects in this filing, namely that Appellant failed to
show that (1) a complete copy of the application was sent to the inventor
who refused to sign the declaration, and (2) the registered practitioner who
signed the declaration, James A. LaBarre, was authorized to act on the
assignee’s behalf, does not obviate the ’571 application’s status as a
broadening reissue application. See ’571 Application, Petition Decision
mailed Sept. 15, 2009. As Appellant indicates (Reply Br. 2–4), these defects

to File Missing Parts of Reissue Application (according an application
number and filing date to “this reissue application”) (emphasis added).
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were not germane to the indicia of Appellant’s intent to reissue the ’257
patent via the ’571 application, including (1) the assignee’s written consent
to reissue the patent, and (2) the broadened claims that were filed in the ’571
application to correct the identified error in the patent, namely that the
patentee claimed less than it had a right to claim. That the ’571 application
was later abandoned for failure to reply timely to the petition decision
likewise does not obviate that application’s status as a broadening reissue
application—an application that has priority at least as early as the filing
date of the ’257 patent’s underlying U.S. Application 09/914,868, namely
September 4, 2001.14 To the extent that the Examiner finds otherwise (see
Ans. 6–9), we disagree.

The applications filed after the ’571 application are reissue continuation
applications

On this record, we also agree with Appellant (Appeal Br. 15–17;
Reply Br. 4–5) that the applications filed after the ’571 application (“the
post-’571 applications”), including the present ’636 application, are reissue
continuation applications—not regular or “Bauman-type” continuation
applications as the Examiner indicates (Ans. 9–13).
As noted previously, each application filed after the ’571 application
was styled as a continuation application, and there was copendency between

14 Although Appellant contends that the effective filing date is February 21,
2000—the filing date of the ’257 patent’s underlying PCT Application
PCT/FR00/00454—we need not determine whether Appellant is entitled to
this earlier date, for the ’257 patent’s U.S. filing date of September 4, 2001
is dispositive of this appeal.
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successive applications such that the chain of priority was maintained back
to the ’571 reissue application. Accord ’636 Application Bib. Data Sheet
(summarizing this chain of priority in the “Continuing Data” section).
To be sure, filing a continuation application of a reissue application
does not guarantee that the continuation application is also a reissue
application. See Bauman, 683 F.2d at 409; see also Manual of Patent
Examining Procedure (MPEP) § 1451 (9th ed. Rev. 08.2017, Jan. 2018)
(“[T]he mere fact that the application purports to be a continuation or
divisional of a parent reissue application does not make it a reissue
application itself, since it is possible to file a [regular] . . . continuing
application of a reissue application.”). Therefore, to ensure that a
continuation application is also a reissue application with its earlier filing
date, namely the effective filing date of the patent for which reissue is
sought, the patentee must accept “reissue restrictions.” See Bauman, 683
F.2d at 409. Otherwise, the patentee must accept a later filing date, namely
that of the associated reissue application, via a regular continuation
application. See id.; see also MPEP § 1451 (referring to “Bauman-type”
continuation applications).
As the Bauman court explains, the key differences between regular
and reissue applications relate to the legal effect of patents issuing from
those applications. Bauman, 683 F.2d at 409. Unlike regular utility patents,
reissue patents are (1) issued for the original patent’s unexpired term; (2)
subject to intervening rights under 35 U.S.C. § 252; and (3) are issued only
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upon surrender of the original patent.15 Id. These reissue restrictions,
however, can be avoided by filing a regular continuing application—a so-
called “Bauman-type” continuation or divisional application. See id.; see
also MPEP § 1451.
Unlike reissue continuation16 applications, “Bauman-type”
continuation applications are limited to the filing date of the reissue
application—not that of the original patent. See Bauman, 683 F.2d at 409;
see also MPEP § 1451. Nor can a patentee who files a “Bauman-type”
continuation application file a later reissue application of the original patent
once there are no pending reissue applications. Id.
Therefore, if a patentee chooses to file a reissue continuation
application, it is crucial that the patentee identify clearly and unambiguously
that is the case: otherwise, the application could be considered a “Bauman-
type” continuation application. See id. To this end, (1) the application data
sheet must state, or (2) the specification must be amended to state that the
application is a “continuation reissue application” of its parent reissue
application. Id. The MPEP notes that, in general, a continuing application
of a reissue application will be considered a “Bauman-type” continuing
application when there are no indicia on filing that a continuing reissue
application is filed. See id.

15 The original patent’s surrender now occurs when the reissued patent
issues. See 35 U.S.C. § 252; see also MPEP § 1416 (noting that before
October 21, 2004, a reissue applicant was required to physically surrender
the letters patent before the reissue application would be granted).
16 Although we refer to only reissue continuation applications here and later
in the opinion for brevity, these general principles also apply to reissue
divisional applications.
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The MPEP lists six such indicia that a continuing reissue application
is filed, namely (1) a 37 C.F.R. § 1.175 oath/declaration, which is not merely
a copy of the parent’s reissue oath/declaration; (2) a specification and/or
claims in proper double column reissue format per 37 C.F.R. § 1.173; (3)
amendments in proper format per 37 C.F.R. § 1.173; (4) a 37 C.F.R. § 3.73
statement of assignee ownership and consent; (5) a correct transmittal letter
identifying the application as a reissue filing under 35 U.S.C. § 251; and (6)
an identification of the application as being (a) a reissue continuation of the
parent reissue application; (b)(i) a continuation of the parent reissue
application, and (ii) an application to reissue the patent; or (c) equivalent
language. Notably, indicia (6) most clearly distinguishes these
identifications from merely stating that the application is a continuation of
the parent reissue application, and the MPEP gives nine examples of
acceptable identifications of reissue continuing applications as opposed to
“Bauman-type” continuation applications. Id.
Although the MPEP does not specify how many of the six enumerated
indicia must be present to identify a reissue continuation application, the
MPEP nonetheless states explicitly that when there are no such indicia on
filing, a continuing application of a reissue application will be considered a
“Bauman-type” continuing application. MPEP § 1451. Notably, the
Examiner apparently construes this section to require satisfying only one of
the six enumerated criteria to indicate that a reissue continuation application
is filed as opposed to a “Bauman-type” continuation application. See Ans.
11 (“If an applicant supplies one of the indicia at the time of filing, a
working assumption is made that the applicant intended to file a reissue
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continuation . . . .”); see also id. (referring to the “at least one indicia policy”
in MPEP § 1451) (emphases added).
Nevertheless, Appellant contends that because three such indicia were
present in each application filed after the ’571 application by containing (1)
a specification in double column reissue format; (2) amendments in proper
format; and (3) statements of assignee ownership and consent which
characterizes the application as an “application to reissue the patent,” the
post-’571 applications should therefore be treated as reissue continuation
applications consistent with USPTO policy. Appeal Br. 15–17; Reply Br. 2–
5.
Although these three indicia could arguably be present in a regular
“Bauman-type” continuation application, their presence in the post-’571
applications nonetheless weighs in Appellant’s favor, at least to the extent
that the three indicia, considered in light of the other evidence of record,17 at
least suggest that Appellant was willing to accept “reissue restrictions” noted
by the Bauman court when those applications were filed. See Bauman, 683
F.2d at 409. Accord Appeal Br. 15 (noting this point). That the present ’636
application’s Specification was amended to specify explicitly that each post-
’571 application was a reissue continuation application of its respective
predecessor application—thus providing the sixth enumerated indicator in

17 Although not included in MPEP § 1451’s enumerated indicia, we note that
the Appellant filed the same broadened claim set in each application, which
further evidences Appellant’s intent to file broadening reissue continuations
in each application throughout the priority chain, as opposed to Bauman-
type continuation applications where such broadened claims are improper.
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Reissue Application 13/792,636
Patent 7,286,257 B1

18
MPEP § 145118—only further weighs in favor of Appellant in this regard, as
does the fact that all applications filed after the ’257 patent issued recited
broadened claims indicating unambiguously an intent to broaden the
patented claims via reissue. See Reply Br. 2–4.
We reach this conclusion despite these applications’ defects that
ultimately resulted in their abandonment. Leaving aside the fact that four of
those abandoned applications have been revived as the Examiner
acknowledges (Ans. 4), and the fees have been paid in all applications in the
priority chain as Appellant indicates (Appeal Br. 14–15; Reply Br. 1–2),19

18 Notably, the Utility Patent Application Transmittal Form PTO/AIA/15
Form and Application Data Sheet filed March 11, 2013 in the present ’636
application do not clearly identify the application (or any other post-’571
applications) as reissue continuation applications consistent with the
guidance in the Reissue Application Filing Guide for Applications filed on
or after September 16, 2012 (“Reissue Filing Guide”) referenced in MPEP
§ 1451. See Reissue Filing Guide, at 8–9 (noting that the Reissue Patent
Application Transmittal Form PTO/AIA/50 provides the ability to identify
reissue continuation applications by merely checking the appropriate box);
see also id. at 10 (showing an example of how to make this identification on
the Application Data Sheet). Although it is unclear why Appellant did not
use this straightforward identification procedure in the ’636 application or
file a supplemental Application Data Sheet correcting the information under
37 C.F.R. § 1.76(c), Appellant’s amendment to the ’636 application on May
7, 2015 nevertheless is consistent with the recommendation in MPEP § 1451
to also identify reissue continuation applications in the first line of the
Specification.
19 Although the Examiner finds that the filing fee was not paid in the ’096
application during its pendency and, consequently, the present application’s
effective filing date cannot extend earlier than January 11, 2012, the filing
date of the subsequent copending application in the priority chain, namely
the ’086 application (Ans. 4–5), this fee was, in fact, paid on January 11,
2012 as Appellant indicates. See Reply Br. 1–2 (citing evidence of this
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Patent 7,286,257 B1

19
the fact that the post-’571 applications’ defects prevented their examination
does not preclude their status as filed reissue applications. The Examiner’s
reliance on the reissue statute, 35 U.S.C. § 251, and associated regulations,
namely 37 C.F.R. §§ 1.171–75, is unavailing in this regard. Although
reissue applications have special filing requirements beyond those for
regular utility applications, that does not mean that reissue continuation
applications must be complete in all respects—including containing a
complete reissue declaration—before those applications can be considered
reissue continuation applications. The Examiner cites no such authority for
such a rigid requirement—nor are we aware of such a requirement. Indeed,
our reviewing court has permitted correction of a defective declaration in a
broadening reissue application more than two years after the associated
patent was granted. See In re Bennett, 766 F.2d 524, 528 (Fed. Cir. 1985).
Although not precisely on point with the facts at issue here, Bennett
nonetheless shows that an imperfect reissue declaration is not fatal to a
broadening reissue application despite its unique statutory and regulatory
requirements, and that some flexibility in correcting those defects is
permissible—even after a statutory time period.
Here, although the defects in the post-’571 applications yielded
incomplete applications that prevented their examination in all but the
present ’636 application, those deficiencies nevertheless did not materially
affect their status as reissue continuation applications given the evidence on

payment). Accordingly, the Examiner’s finding the present application’s
effective filing date is January 11, 2012 due to this alleged non-payment is
incorrect.
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Patent 7,286,257 B1

20
this record.20 Indeed, this result is consistent with similar situations
involving utility patents, where the oath/declaration requirement for every
application in a chain of continuing applications need not be completed for
the parent utility application to be recognized. Accord Reply Br. 4–5 (noting
this point). We see no reason to treat reissue continuation applications any
differently.
Therefore, given the chain of priority established by the applications
filed after the ’257 patent issued, a priority that not only dates back to the
filing of the ’571 broadening reissue application on May 6, 2009—an
application that sought to reissue the ’257 patent whose effective filing date
is at least as early as September 4, 2001. Accordingly, the Examiner’s § 251
rejection premised on Appellant’s broadening the patented claims outside
the two-year statutory period is erroneous.

THE PRIOR ART REJECTIONS
Because the effective filing date of the present ’636 application is at
least as early as September 4, 2001 which predates the Morgavi and Elgar
references on which the Examiner’s anticipation and obviousness rejections
are based (see Final Act. 7–30), these rejections are likewise erroneous.

20 Indeed, for clarity, Appellant should file corrected supplemental
Application Data Sheets, amend the first line of the Specifications in each
pending application in this priority chain to identify the applications
expressly as reissue continuation applications in accordance with the Reissue
Application Filing Guide for Applications filed on or after September 16,
2012 (“Reissue Filing Guide”) referenced in MPEP § 1451, and file a
supplemental declaration identifying an error relied upon as the basis for
reissue in accordance with 37 C.F.R. § 1.175(a).
Appeal 2018-007998
Reissue Application 13/792,636
Patent 7,286,257 B1

21

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)
/Basis
Affirmed Reversed
27–31,
34–37, 39,
40, 47–59,
61–75,
78–92,
94–104
251 Improper
Broadening
27–31,
34–37, 39,
40, 47–59,
61–75,
78–92,
94–104
27–31,
34–37, 39,
40, 47–59,
61–75,
78–92,
94–104
102(b) Morgavi 27–31,
34–37, 39,
40, 47–59,
61–75,
78–92,
94–104
27–31, 39,
48–57,
61–63,
68–75,
78–80,
84–92,
94–96,
99–104
102(b) Elgar 27–31, 39,
48–57,
61–63,
68–75,
78–80,
84–92,
94–96,
99–104
58, 59 103 Elgar 58, 59
47, 64–67 103 Elgar,
Klinefelter
47, 64–67
34–36,
81–83, 97,
98
103 Elgar,
Houmeau
34–36,
81–83, 97,
98
37 103 Elgar,
Houmeau,
Nioche
37
40 103 Elgar,
Houmeau,
Hatayama
40
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Patent 7,286,257 B1

22
Overall
Outcome
27–31,
34–37, 39,
40, 47–59,
61–75,
78–92,
94–104

REVERSED