Application of Handel, Patent Appeal No. 6902.

• Decision Date: 13 February 1963
• Docket Number: Patent Appeal No. 6902.
• Citation: 312 F.2d 943,136 USPQ 460
• Parties: Application of George J. HANDEL, Jr.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

136 USPQ 460, 312 F.2d 943 (1963)

Application of George J. HANDEL, Jr.

Patent Appeal No. 6902.

United States Court of Customs and Patent Appeals.

February 13, 1963.

Roger L. Hansel, Stevens, Davies, Miller & Mosher, Washington, D. C., William Hintze, Harrisburg, Pa. (Truman S. Safford, New York City, and Marshall M. Holcombe, Harrisburg, Pa., of counsel), for appellant.

Clarence W. Moore, Washington, D. C. (Raymond E. Martin, Washington, D. C., of counsel), for Commissioner of Patents.

Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH, and ALMOND, Judges.

RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claims 4-6 of appellant's application Ser. No. 755,830, filed August 1, 1958, for reissue of his patent No. 2,705,797, granted April 12, 1955, for "Terminal Applicator Construction."

The sole issue in the case is whether the appealed claims are "for the invention disclosed in the original patent," as required by 35 U.S.C. § 251, the statute governing the granting of reissues. The Patent Office held they are not and appellant argues to the contrary.

The invention disclosed in the original patent¹ is a machine for applying electrical terminals to pieces of wire, the terminals being fed by the machine from a reel to the point of application in continuous strips from which they are severed, as applied, one at a time. The need appellant sought to fill by his invention was for a machine capable of being variously set up to apply automatically "a considerable variety of electrical terminals or connectors." To this end, the machine, which is in the nature of a stamping press, is arranged to employ a variety of sets of matched crimping and shearing dies suited for use with the different terminals or connectors; and the feeding mechanism, which advances the strips of terminals or connectors one unit at a time, is made adjustable. Two of the more significant objects of the invention stated in the application read as follows:

"Another object is the provision in a press of a practicable apparatus for applying terminals in which any one of several terminal feeding relationships may be selected and with which any one of several terminal applying assemblies may be combined all as a matter of mere routine. * * * A still further object resides in the provision of a feeding assembly wherein the length of feed may readily and accurately be adjusted." Emphasis ours.

It is not questioned that the specification and drawings fully describe a machine which carries out these objects.

The Claims

The Patent Office admits that appealed claims 4, 5, and 6 incorporate entirely (with the exception of changing the word "mechanism" to "machine") the language of original patent claims 1, 2, and 3 and differ therefrom in subject matter only in that each of the appealed claims adds one or two elements to the patent claim on which it is based. We quote as acceptable the solicitor's explanation:

"Claim 4 adds to claim 1 a storing means (the reel) and a means for sequentially feeding the connector strip, the latter having an adjustable stroke. Claim 5 is similar in scope to claim 4, except that it omits the storing means of the latter claim. Claim 6 likewise omits the storing means, but specifies that the feeding means or mechanism has `a plurality of settings corresponding to different feed strokes required by the different size and shape strip connectors.\'"

The solicitor also states, and we agree, that the issue before us is the same as to all claims, notwithstanding their slight differences.

The Rejection

There is some confusion as to the rejection before us.

The examiner rejected the claims on two grounds: (1) "that they are drawn to the old combination of a fastener applicator and feed means," citing two references to show the combination; (2) "that the original patent was not partially inoperative and defective by reason of applicant's claiming less than he had a right to claim in his patent."²

The board reversed ground (1), saying, "we shall not sustain the rejection of claims 4, 5, and 6 on the ground that the recited combination is disclosed by either of the * * * references." That rejection is, therefore, clearly out of the case.

As to ground (2) it is necessary to recite some added facts³ before the statements of the board can be understood. It appears that at some time during the prosecution of the application for the original patent the examiner required "division" (restriction) as between claims to "1. Combination of applicator and feed; 2. Subcombination of applicator." The examiner says the applicant elected to prosecute claims to the subcombination, which resulted in the allowance of the three claims of the patent and in the issuance of the patent. In his Answer, in connection with his second ground of rejection, the examiner said:

"The claims appealed herein are drawn to the same combination as the nonelected claims of the original application. The claims set forth the combination of a connector applicator and a feed mechanism. The present claims emphasize a different detail "feature," the board called it of the feed mechanism than those of the combination claims of the original application, however, that does not change the basic combination. * * *

"Therefore, it is not seen that the patent is defective and partially inoperative by reason of applicant claiming less sic than he had a right to claim."

It will thus be seen that underlying the examiner's refusal of the claims was his requirement for restriction and the applicant's election in the original application, including cancellation of nonelected claims. The board stated its understanding of the examiner's position as follows:

"He has taken the position that appellant may not obtain claims by reissue that could have been obtained in a divisional application properly filed in response to the requirement for division in the original application."

The board then pointed out that appellant's argument was that since the appealed claims and the nonelected claims were to distinctly different combinations he was not estopped to present the instant claims in a reissue application.

Against this background, we now quote the board's ruling on the examiner's second ground of rejection:

"It is established that an applicant is estopped from obtaining in a reissue application a claim which because of a requirement for division, with which he acquiesced, was not allowable in his original application. Cases cited. However, since the instant claims recite a different character of connector feed mechanism from that recited in the claims cancelled in the original application, we do not regard the requirement for division and cancellation of nonelected claims in the original application as constituting an estoppel with respect to the appealed claims." Emphasis ours.

In view of this statement, as well as other discussion of the matter in the board's opinion, we cannot conclude otherwise than that the board rejected the entire rationale of the examiner's second rejection, which was predicated on the requirement for restriction and appellant's acceptance thereof.

The board nevertheless sustained the examiner's rejection of claims 4, 5, and 6, but on a basis never suggested by the examiner, and one which we regard, on the whole, as contrary to law. It said (emphasis ours):

"Nevertheless, it is fundamental that a reissue must pertain to the same invention as that recited in the claims of the patent. Parker & Whipple Company v. Yale Clock Company, 123 U.S. 87, 8 S.Ct. 38, 31 L. Ed. 100; 41 OG 811; 1887 CD 584. The claims of the patent recite a `connector applicator mechanism\' for applying connectors to wires by means of severing and crimping die assemblies and do not comprehend any means for feeding the connectors to the mechanism. The appealed claims recite a `connector applicator machine\' and include, in addition to the aforementioned connector applicator mechanism, a mechanism for feeding connectors to said applicator mechanism. Consequently, by the introduction of an additional element the appealed claims are not directed to the same invention recited in the claims of the patent. Furthermore, we find in the patent no clear evidence of an intention to claim the particular subject matter of the appealed claims. Accordingly, we are of the opinion that the appealed claims are not merely a restatement of the invention claimed in the patent in narrower form but are a recitation of a different invention."

On request for reconsideration the board clearly reaffirmed its position saying that its decision had been that the appealed claims are directed to "a different invention from that recited in the claims of the patent sought to be reissued." (Emphasis ours.) It also reaffirmed its finding of no intent to claim the subject matter of the appealed claims but amplified its position by stating that this finding was based on an examination of the claims presented for prosecution in the application for the issued patent.⁴

On the basis of the foregoing holdings in the tribunals below, we arrive at the following conclusions as to the rejection which is before us. The board clearly reversed ground (1) based on old combination. The board effectively reversed ground (2) by entirely disagreeing with the only reasoning used by the examiner to support it. The board said, however, that it was "not convinced of any fundamental error in the Examiner's position," which we can take in this context as meaning no more than that he was right in rejecting the claims. But the board substituted for the examiner's reasoning an entirely different statutory basis of its own for holding that appellant could not have claims 4, 5, and 6 in a reissue.

The examiner's reason was that appellant had not...