Application of Clark

• Decision Date: 20 November 1975
• Docket Number: Patent Appeal No. 75-505.
• Citation: 522 F.2d 623
• Parties: Application of Leland C. CLARK, Jr.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

522 F.2d 623

Application of Leland C. CLARK, Jr.

Patent Appeal No. 75-505.

United States Court of Customs and Patent Appeals.

September 25, 1975.

Rehearing Denied November 20, 1975.

Joseph G. Nauman, Dayton, Ohio, attorney of record, for appellant.

Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents, Jere W. Sears, Washington, D. C., of counsel.

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.

RICH, Judge.

This appeal is from a decision of the Patent and Trademark Office Board of Appeals affirming the examiner's rejection of all claims remaining in an application to reissue a patent.¹ The examiner rejected the reissue application on three separate grounds and the board affirmed all three. We affirm.

The first ground was, speaking generally and in the words of the board, a rejection "(1) Under 35 U.S.C. 251," the statute authorizing reissue of defective patents. That statute reads, in pertinent part:

§ 251. Reissue of defective patents

Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Commissioner shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent.

In his first action on the reissue application the examiner rejected all claims under § 251 for two reasons. First, the examiner said that in view of the decision of the Court of Appeals in Beckman Instruments, Inc. v. Chemtronics, Inc., 428 F.2d 555 (5th Cir.), cert. denied, 400 U.S. 956, 91 S.Ct. 353, 27 L.Ed.2d 264 (1970), "applicant is not deemed to have satisfied the statutory requirement of a lack of `deceptive intention'." Second, the examiner said that in view of the statement in the reissue oath (declaration)

* * * that the purpose of this reissue application is to amend certain claims in order to make more explicit structural features already implicit in those claims

* * * * * *

"reissue would not be proper."

After considering extensive arguments by appellant, the examiner, in his final rejection, repeated and adhered to both of his reasons for rejecting all claims under § 251. As to the first reason he said,

Applicant is reminded that the Court of Appeals of the Fifth Circuit found the Clark patent to be invalid for the deliberate failure to fulfill the uncomprising sic, uncompromising duty of full and good faith disclosure to the Patent Office. This is considered to be sufficient ground for rejection under 35 U.S.C. 251 as not meeting the requirement of lacking deceptive intent.

As to the second reason, he reiterated that making more explicit structural features already implicit in claims "is not a proper basis for seeking reissue."

In his Examiner's Answer, responding to appellant's appeal brief, the examiner pointed out, inter alia, that this application is to reissue a patent involved in a litigation in which the Fifth Circuit Court of Appeals had held the patent invalid because of plaintiffs' (the plaintiffs being appellant and his exclusive licensee, by whom the application for the patent sought to be reissued had been prosecuted) "failure to fulfill the `uncompromising duty' of full and good faith disclosure to the Patent Office." That failure resided in not disclosing to the Patent Office the Stow et al. publication, well known to plaintiffs at the time and clearly known to them to be of pivotal importance in determining the patentability of Clark's claims.²

As the examiner had done previously, he equated the deliberate failure to disclose the Stow et al. reference to the Patent Office with failure to comply with § 251, which requires that whatever the defect in the patent may be it shall have occurred "through error without any deceptive intention." He then concluded:

The deliberate failure to fulfill an uncomprising sic duty of disclosure as found by the Court of Appeals is considered sufficient ground for rejection under 35 USC 251.

And, summarizing his previously-stated second reason for noncompliance with § 251, he said:

The rejection under 35 USC 251 is also proper because applicant alleges in the oath * * * that the sought changes merely "make more explicit structural features already implicit in those claims." If this is so, re-issue is not proper.

The board, in affirming the rejection under § 251, said (emphasis added):

Deliberate conduct, found by the Court of Appeals to justify a finding of invalidity of the patent based upon such conduct, in our view, is sufficient to preclude a finding that there was error within the meaning of 35 U.S.C. 251, to permit reissue of the patent. Therefore, the Examiner's rejection under 35 U.S.C. 251 is sustainable.

The opinion of the Fifth Circuit Court of Appeals, in the suit above referred to, summarized the court's decision on validity of the patent sought to be reissued by saying, in part:

We find the patent sued upon in this case to be invalid for two independent reasons. * * * The second is that Beckman, in securing the patent, failed to fulfill the "uncompromising duty" of disclosure of an applicant before the Patent Office, because Beckman, while possessed of information regarding Stow's invention and realizing its significance, omitted that information from its patent application.

The court followed up that statement with a full discussion of the second ground in section II B of its opinion wherein it said, inter alia, after reciting the facts with respect to the knowledge and relevance of the Stow et al. reference:

Appellants' only reply to these facts is that they did not consider Stow's work to be relevant prior art. This assertion, however, is rendered utterly incredible both by Beckman's conduct and by the obvious similarity of the Stow and Clark devices. * * * there was no excuse for appellants' failure to disclose Stow's work to the Patent Office, and this conclusion prevents us from considering Beckman's conduct as fulfilling an "uncompromising duty" of good faith disclosure.

OPINION

It was appropriate that the examiner should have given initial consideration to the question of whether a proper ground for reissue existed under § 251. That is the first order of business in examining an application for reissue. Stringham, Patent Soliciting and Examining, Sec. 297, pp. 577-78 (1934); McCrady, Patent Office Practice, Sec. 222 (4th ed. 1959); Manual of Patent Examining Procedure 1401.08. This entails a consideration of the grounds stated in the reissue oath or declaration on the basis of which reissue is sought. Only after that hurdle has been cleared is it necessary to consider the issues of patentability of the reissue claims over prior art, as developed on further examination of new or amended claims or reexamination of retained patent claims. See 37 CFR 1.175 and 1.176.

The instant application does not clear the first hurdle and its rejection must be affirmed on that ground. It is therefore unnecessary to consider other questions discussed in the briefs and arguments.

This opinion is sharply focused on the single question of whether appellant has presented a good case for reissue of his patent under § 251.

Claims 1, 2, 6, 7 and 8 are the only claims on which he appealed to the board and on which he appeals here. As the board found, claims 2 and 8 are the same as claims of the patent. Appellant admitted before the board that the remaining claims are "in substance" the same as claims in the patent. This is in accord with the allegation in the reissue declaration with reference to all of the claims initially contained in the reissue application (many of which were cancelled) "that the purpose of this reissue application is to amend certain claims in order to make more explicit structural features already implicit in those claims * *." (Emphasis added.) Appellant's Reply Brief before the board similarly admits: "It is true that the claims on appeal are in substance claims which were in the original patent." We see no change in the subject matter delineated by these "changed" claims.

Simple logic forces the conclusion that appellant never thought he was claiming "more or less than he had a right to claim in the patent." It could not have been for that statutory reason that reissue was applied for. The declaration of the reissue application alleges nothing "defective" in the specification or drawing. It is true that some amendments were made to the specification but not until after the final rejection of the reissue application. Consequently, they are not referred to in the declaration as curing defects or as reasons why reissue was necessary. Furthermore, the amendments are all mere deletions, the first being of a formalistic reference to the general field to which the invention "relates" and the remainder being the deletion of three stated "objects" of the invention. Obviously they were deleted merely because the opinion of the Court of Appeals had referred to them in its discussion of claim scope and validity in view of the prior art. These omissions from the specification, however, are no more substantive than the changes in the claims, which were not made until the reissue application had been examined and rejected.

It being apparent that in filing his application for reissue appellant asserted no defects in the specification, drawing, or claims, it may well be asked what his purpose was. Considering the substance of the reissue declaration, it clearly constitutes an argument as to the differences between what he claimed in his patent and the prior art, particularly Stow et al., and a justification of his failure to call the Stow et al. reference to the attention of the Patent Office. The...