Ex parte Tanaka (precedential): reissue not available to add narrower claims when issued claims remain in the application

In the precedential opinion Ex parte Tanaka (decided Dec. 9, 2009), the BPAI ruled on an issue of first impression: "whether the presentation of a narrower claim in a reissue application that still contains all of the original patent claims is an error correctible by reissue." No facts were at issue in this case, only the meaning of the reissue statute.

The Board reviewed fifty years of case law, distinguishing the closest Federal Circuit case (Hewlett Packard Co. v. Bausch and Lomb) and several cases from the Federal Circuit's predecessor (the CCPA). The Board then concluded that reissue is not available to add narrower claims when issued claims remain in the application:

The Appellant attempts to have it both ways, by seeking to add narrower claims to the original patent without complying with the requirements of 35 U.S.C. § 251 and 37 C.F.R. § 1.175(a)(1), to be 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. Section 251, however, requires that for the Director to reissue a patent, the patent must be deemed to be wholly or partly inoperative or invalid. The reissue statute may be remedial in nature, Altenpohl, 500 F.2d at 1156, but it is not as broad in its plain wording as to allow a patentee to simply re-prosecute an otherwise operative and valid patent.
(Decision, p. 20.)

Enough said.