Can claims be broadened during inter partes reexamination?
No, claims cannot be broadened during inter partes reexamination. The MPEP clearly states:
“Where new claims are presented, or where any part of the disclosure is amended, the claims of the inter partes reexamination proceeding should be examined under 35 U.S.C. 314, to determine whether they enlarge the scope of the original claims. 35 U.S.C. 314(a) states that ‘no proposed amended or new claim enlarging the scope of the claims of the patent shall be permitted’ in an inter partes reexamination proceeding.”
Any claim that enlarges the scope of the original patent claims should be rejected under 35 U.S.C. 314(a). The MPEP provides guidance on determining whether a claim enlarges the scope, stating that a claim is considered broadening if it is broader in any one respect, even if it may be narrower in other respects.
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