By Charles L. Gholz2 and Alexander E. Gasser3
Introduction
35 USC 135(b)(1) states (with emphasis supplied) that "A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted." Similarly, 35 USC 135 (b)(2) states (also with emphasis supplied) that "A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an application published under section 122(b) of this title may be made in an application filed after the application is published only if the claim is made before 1 year after the date on which the application is published."
Mr. Gholz has previously expressed the view that "35 USC 135(b)(2) is probably the worst written section of Title 35." Gholz and Wilcox, Have Ding v. Singer and Ryan v. Young Rationalized 35 USC 135(b)(2)?, 16 Intellectual Property Today No. 7 (2009) at page 10. Now we have a new issue--but this time with both 35 USC 135(b)(1) and 35 USC 135(b)(2). While most of the opinions that we cite deal with 35 USC 135(b)(1), we believe that the teachings that we draw from those opinions apply to both 35 USC 135(b)(1) and (b)(2).
Narrowing Amendments in Response to a Rejection Are Trouble
The Fe...
