Appeal No. 2006-1873 Page 5
Reissue Application No. 08/058,163
III. Discussion
A. Broadening reissues are prohibited after two years
19. Section 251 of Title 35 of the U.S. Code reads, in relevant part,
Whenever any patent is, through error without any deceptive
intention, 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, the Director shall, on the surrender of the 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.
* * * * * *
No 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.
1. analysis
The instant reissue application was filed more than two years after the grant of
the original patent. A claim is broadened if it is broader in any one respect even though
it may be narrower in other respects. By removing the express requirement that the
pheromone of the claimed composition be a solid pheromone, appellants have enlarged
the scope of the claims of the original patent. In addition, reissue claim 18 enlarges the
scope of the claims of the original patent by adding a “synthetic attractant” as an
alternative to a “water insoluble liquid pheromone.” Furthermore, reissue claims 17 and
19 enlarge the scope of the original patent claims by reciting particular pheromones not
previously recited. Thus, at least reissue claims 1-12 and 17-19 violate the two year
period of limitation on applying for broadening reissues as set forth in § 251.
Original patent claims 13 and 14 limited the solid pheromone of the originally
claimed composition to either cis-2-isopropylpentyl-1-methyl-cyclobutane-ethanol or 1,1-
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