Application of Rogoff, Patent Appeal No. 6385.

• Decision Date: 15 December 1958
• Docket Number: Patent Appeal No. 6385.
• Citation: 261 F.2d 601,120 USPQ 185
• Parties: Matter of the Application of Julian ROGOFF.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

120 USPQ 185, 261 F.2d 601 (1958)

Matter of the Application of Julian ROGOFF.

Patent Appeal No. 6385.

United States Court of Customs and Patent Appeals.

December 15, 1958.

Ernest Fanwick, Norwalk, Conn. (Robert I. Dennison, Washington, D. C., of counsel), for appellant.

Clarence W. Moore, Washington, D. C. (George C. Roeming, Washington, D. C., of counsel), for the Commissioner of Patents.

Before O'CONNELL, Acting Chief Judge, and WORLEY, RICH, and MARTIN, Judges.

WORLEY, Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the rejection by the Primary Examiner of claims 2, 3, and 4 of appellant's application, No. 467,665, filed November 8, 1954, for the reissue of patent No. 2,429,585, granted October 21, 1947, for a pressed insulated connector.

Claims 2 and 4 are representative of the appealed claims and read:

"2. A connector for use in a crimped joint comprising a cylindrically shaped metal body portion having an open end for receiving a conductor therein, an insulating cover thereon, said insulating cover having the physical properties of permitting an indenting tool to be applied externally to the insulation and causing the metal body underneath to be indented in the form of a recess to a conductor therein, and of substantially retaining the shape of the recess in the insulation after the tool has been withdrawn.

"4. A connector for use in a crimped joint comprising a cylindrically shaped metal body portion having an open end for receiving a conductor therein; an insulating cover thereon, said insulating cover having the physical properties of permitting an indenting tool to be applied externally to the insulation and causing the metal body underneath to be indented in the form of a recess to a conductor therein and of initially retaining the approximate shape of the recess in the insulation after the tool has been withdrawn but having a tendency to return, at least to some extent, to the shape it had prior to indenting."

The single reference relied on is:

                  Watts    Re. 23,688   July 21, 1953
                

The following statement as to the history of appellant's application, so far as pertinent to the instant rejection, is found in the board's decision:

"Seven days after the issuance of appellant\'s patent No. 2,429,585, the single claim thereof was copied by the party Watts in a reissue application of the Watts patent No. 2,410,321, which had issued on October 29, 1946, as claim 5 of the reissue application, together with claims 6 and 7, which were patterned after the patent claim, for purpose of interference. After due proceedings, the Primary Examiner finally rejected claims 5, 6 and 7 of the Watts reissue application on the ground that Watts did not disclose the subject matter of these claims. In a decision upon appeal from the final rejection, the Board of Appeals reversed the Primary Examiner and held that the party Watts did disclose the subject matter of the appealed claims. An interference No. 83,667 involving appellant\'s patent No. 2,429,585 and Watts reissue application No. 782,469 was instituted and priority was granted to Rogoff, the junior party, on the grounds that the sleeve of insulation disclosed in the original Watts application did not respond to the count in issue. In other words, the Board of Interference Examiners held that the party Watts did not disclose the subject matter of the Rogoff patent claim. Subsequent thereto, in proceedings before the Primary Examiner, claims 6 and 7 and additional claim 8 of the Watts reissue application were allowed to Watts and issued in the Watts reissue patent as claims 5, 6 and 7 thereof on July 21, 1953. On November 8, 1954, nearly sixteen months after the issue of the Watts reissue patent, the party Rogoff filed this reissue application of his patent No. 2,429,585, wherein he copied claims 5, 6 and 7 of the Watts reissue patent as claims 2, 3 and 4 of his reissue application for the purpose of interference."

The primary basis of the rejection is that the appealed claims are broader than the single claim of appellant's patent, No. 2,429,585, and that, since the reissue application was not filed within two years after that patent issued, the allowance of the claims is barred by Title 35, section 251 of the United States Code, in which is found the following language:

"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."

That provision contains no exceptions or qualifications as to time or extent of enlargement. The sole issue, therefore, is whether the claims on appeal enlarge, i. e., broaden, the patent claim.

It is well settled that a claim is broadened, so far as the question of right to reissue is concerned, if it is so changed as to bring within its scope any structure which was not within the scope of the original claim. In other words, a claim is broadened if it is broader in any respect than the original claim, even though it may be narrowed in other respects. Fox Typewriter Co. v. Corona Typewriter Co., 6 Cir., 282 F. 502; In re Bostwick, 102 F.2d 886, 26 C.C.P.A., Patents, 1117; Schenk v. United Aircraft Corp., D.C., 43 F.Supp. 679; and Mercoid Corp. v. Milwaukee Gas Specialty Co., D.C., 33 F.Supp. 681.

Appellant's patent and reissue application disclose a device adapted to electrically connect two or more conductors and comprising a deformable metal ring or sleeve surrounded by an insulating cover. When a connection is to be made the conductors to be joined are inserted in the metal sleeve and the sleeve and its insulating covering are then compressed so that they are indented and forced into intimate contact with the conductors. It is stated in the patent that the insulating cover is substantially non-elastic and that it retains its shape after the indenting tool is withdrawn.

The single claim of the patent is as follows:

"A connector for use in a crimped joint comprising a cylindrically shaped metal body portion having an open end for receiving a conductor therein; a substantially non-elastic insulating cover thereon, said insulating cover having the physical properties of permitting an indenting tool to be applied externally to the insulation and causing the metal body underneath to be indented in the form of a recess to a conductor therein, and of retaining the shape of the recess in the insulation after the tool has been withdrawn."

Appealed claims 2 and 3 follow closely the language of the patent claim, but omit the statement that the insulating cover is "substantially non-elastic."...