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Genus Claims Linking Elected and Nonelected Groups May Be Obtained by Reissue

June 12, 2002

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Last Month at the Federal Circuit - July 2002

Judges: Clevenger (author), Michel, and Schall

In In re Doyle, No. 01-1439 (Fed. Cir. June 12, 2002), the Federal Circuit reversed and remanded the Board’s decision upholding the Examiner’s rejection of claims 54-71 (“the reissue claims”) of Michael P. Doyle’s U.S. Reissue App. No. 08/601,101 (“the reissue application”) on the basis that Doyle was precluded from obtaining reissue claims that encompass subject matter of claims that he had cancelled following the issuance of a restriction requirement during prosecution of his original patent application (“the original application”).

Doyle’s original application describes a genus of chiral transition metal catalysts and methods of using the catalysts to perform enantioselective reactions with prochiral starting materials.

During prosecution of the original application, the Examiner issued a nine-way restriction requirement. In response, Doyle elected to prosecute claims of a single group directed to a method of using the genus of catalysts to insert carbenes (CR2 fragments, where R represents a group bonded to the carbon atom) into carbon-hydrogen, oxygen-hydrogen, nitrogenhydrogen, and silicon-hydrogen bonds. The original application eventually issued as U.S. Patent No. 5,296,595 (“the ‘595 patent”).

After failing to file any divisional applications directed to the cancelled claims during the pendency of the original application, Doyle filed a request for reissue of the ‘595 patent (“the request”) approximately one month before the expiration of the twoyear time limit for broadening reissues.

The reissue claims encompassed a genus of methods that included the methods of the original claims, as well as those of three groups of claims that were not elected in the original application. The Examiner of the reissue application allowed the original claims but rejected the reissue claims. The Board agreed with the rejection, concluding that the reissue claims were prohibited because Doyle was impermissibly seeking through reissue to obtain claims directed to nonelected subject matter. The Board also considered the reissue claims to impermissibly encompass additional subject matter that Doyle never intended to claim.

On appeal, the PTO argued that In re Orita, 550 F.2d 1277 (CCPA 1977), prevented a patentee from seeking through reissue claims that it had failed to pursue after a restriction requirement. After reviewing Orita and other precedent, the Federal Circuit ruled that the so-called Orita doctrine precludes a reissue applicant from obtaining substantially identical claims to those of nonelected groups identified in a restriction requirement. The key is that the applicant, in making the election, acquiesces to the restriction requirement and is then bound by that decision. At that point, the applicant is foreclosed from presenting claims directed to the nonelected subject matter, so failing to do so cannot be error. The applicant may well have erred in not filing a new divisional application during the pendency of his original application; however, that error occurs outside of the prosecution of the original application and may not be remedied by application of 35 U.S.C. § 251.

The Court was not convinced that this reasoning should apply to Doyle’s reissue claims, however, noting that the reissue claims were neither identical to nor substantially similar to the nonelected, cancelled claims. Instead, the reissue claims were genus claims that read on both elected and nonelected subject matter and no claims of individually similar scope were presented in the original application. The new claims were thus linking claims—claims that read on both elected and nonelected claims—which could have, and indeed should have, been presented in the original application. On this basis, the Federal Circuit concluded that the failure to file the claims in the original application was indeed an error.

In response to the Solicitor’s arguments that Doyle had dedicated the subject matter of his linking claims to the public, the Federal Circuit stated that the public knows that patents can be broadened within two years by reissue; therefore, the public is aware that some subject matter dedicated to the public erroneously may be corrected if caught in time.