Application of Mead, Appeal No. 78-524.

• Decision Date: 30 June 1978
• Docket Number: Appeal No. 78-524.
• Citation: 581 F.2d 251
• Parties: Application of Dennis E. MEAD.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

581 F.2d 251

Application of Dennis E. MEAD.

Appeal No. 78-524.

United States Court of Customs and Patent Appeals.

June 30, 1978.

James M. Wetzel, John H. Moore, Chicago, Ill., attys. of record, for appellant.

Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents, Gerald H. Bjorge, Washington, D. C., of counsel.

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

BALDWIN, Judge.

This appeal is from the decision of the Patent and Trademark Office (PTO) Board of Appeals (board) affirming the rejection under 35 U.S.C. § 251 of claims 4, 9, and 10 of the application serial No. 572,357 filed April 28, 1975 entitled "Vibratory Pile Feeder." The application is a continuation of serial No. 393,539 filed August 31, 1973 and is for reissue of appellant's U.S. Patent No. 3,667,590 issued June 6, 1972.¹ Reissue claims 1-3 (which broaden original claims 1-3) stand allowed. We affirm.

Background

1. History at the PTO

The original application, serial No. 273, filed on January 2, 1970, had 25 claims. By amendment on May 21, 1971, claims 26-46 were substituted for claims 1-25, claim 26 corresponding to original claim 1. In a second amendment, dated September 28, 1971, claims 26-46 were cancelled² and claims 47-49 were substituted, corresponding to claims 22, 24 and 25. Claims 47-49 were allowed, and renumbered as 1-3, and issued in patent No. 3,667,590 on June 6, 1972.³

Reissue application serial No. 393,539 was filed August 31, 1973. It broadened claims 1-3 of the patent, and added claims 4 and 5. In response to a rejection for an insufficient reissue declaration, the first declaration by the attorney then of record, Young, was filed on September 16, 1974, setting forth facts concerning when and how the errors alleged to render the patent inoperative occurred.⁴ In addition, claim 5 was cancelled, and claims 6-9 added. Claims 1-3 and 6-8 were allowed and claims 4 and 9 rejected.⁵ Subsequently, an amendment filed (but not entered) added claim 10.⁶

In order to continue prosecution of claims 4, 9 and 10, continuation application serial No. 572,357 (the present application) was filed August 25, 1975, including claims 1-5 from the parent application. By preliminary amendment, claim 5 was cancelled, and claims 6-10 from the reissue application added. In response to another rejection of claims 4, 9 and 10 for an insufficient reissue declaration, a second declaration of Young was filed on November 21, 1975 containing statements identical to those of the first. Claims 1-3 and 6-8 were then allowed, but claims 4, 9 and 10 were finally rejected under 35 U.S.C. § 251⁷ "as not being for matter which might have been claimed in the original patent," being directed to an independent and distinct invention not claimed in the original patent such that the patentee had not claimed less than he had a right to claim.

Appellant argued before the board that: (1) the subject matter of claims 4, 9 and 10 was disclosed in the original patent, and the original specification is clear in its preference for the invention described in those claims; and (2) whether or not the subject matter of claims 4, 9 and 10 is directed to an invention independent and distinct from that claimed in the original patent, applicant had a right to claim the invention of the rejected claims in the original patent.

In a reply brief refused entry by the Commissioner, appellant further argued that the objective intent to make the rejected claims manifested by the original patent could not be determined from Young's after-the-fact declarations.

The board sustained the § 251 rejection in toto, finding, on the basis of Young's second declaration, that "the subject matter of the appealed claims was never intended to be claimed in the original patent but rather in a subsequent application," and therefore, the patent was not inoperative by reason of error. A double-patenting rejection based on Mead patent No. 3,995,733 was withdrawn upon a showing that the claims were not for the same invention.

2. History at this court

On appeal to this court, appellant moved to supplement the record "by insertion of his original patent No. 3,667,590 and its file history, and reissue application serial No. 393,539 (now abandoned) and its filed history * * *," In re Mead, 569 F.2d 1128, 1129, 196 USPQ 811, 812 (Cust. & Pat.App.1978), alleging " `intent to claim' was the dispositive issue before the board * *." Id. at 1130, 196 USPQ at 813. The motion was granted on the basis that those materials "were required to be `carefully studied' by the examiner," and the board, as "an integral element" of the PTO "has before it the `evidence produced before the Patent and Trademark Office.'' Id. at 1129, 196 USPQ at 812.

Appellant now argues that: (1) the original patent and its file history manifested an intent by the patentee to claim the relationship between bristle angle and vibration angle in the vibratory feeder recited in rejected claims 4, 9 and 10, and (2) the objective intent to claim that subject matter, having been manifested by the original patent and file history, is not negated by Young's later subjective declaration.

The PTO responds that: (1) the original patent and its file history, including claim 26, were not called to the attention of the examiner or the board, except in the non-entered reply brief, (2) appellant did not contest below the examiner's or the board's reliance on Young's declaration, (3) appellant's new evidence and arguments are not properly before this court, (4) cancelled claim 26 is substantially identical to claims 4, 9 and 10, and (5) the cancellation of claim 26 must be construed in light of Young's declaration as a voluntary election by appellant of the independent and distinct invention claimed in the original patent.

Issue

The issue is whether patent No. 3,667,590 is partly inoperative: (1) by reason of the patentee claiming less than he had a right to claim in the patent, and (2) through statutory error without deceptive intent.

OPINION

I

The examiner concluded that claims 4, 9, and 10 were directed an an independent and distinct invention not claimed in the original patent on the basis they "require a specific vibrating means which the claims of the original patent do not require and the claims of the original patent require fluid dispensing means or two different types of bristles which claims 4, 9 and 10 do not require."

The entire disclosure, not just the claims, is considered in determining what the patentee intended to claim and what invention the patent discloses. In re Handel, 312 F.2d 943, 948, 50 CCPA 918, 924, 136 USPQ 460, 464 (1963). A review of the record shows that the original and the appealed claims are directed to different embodiments of the invention as disclosed in the specification, not to patentably distinct inventions.⁸ Therefore, with respect to the subject matter of the appealed claims, the original specification satisfies the requirements of § 112, first paragraph, such that appellant had the right to claim such subject matter, as required by § 251.

The examiner also concluded that the Young declaration negated the possibility that appellant intended to secure protection of the appealed subject matter by the original patent. Such a subjective test, based on "intent to claim," is not relevant to the determination whether appellant claimed less than he had a right to claim. The proper test is that set forth in In re Rowand, 526 F.2d 558, 560, 187 USPQ 487, 489 (Cust. & Pat.App.1975), requiring "an essentially factual inquiry confined to the objective intent manifested by the original patent." (Emphasis in original.)

The concept of "intent to claim" originated in Parker and Whipple Co. v. Yale Clock Co., 123 U.S. 87, 8 S.Ct. 38, 31 L.Ed. 100 (1887). The governing statute in that case, an infringement suit based on a reissue patent, was § 53 of the Act of July 8, 1870, c. 230, 16 Stat. 205, Rev.Stat. § 4916, which provided:

Whenever any patent is inoperative or invalid, by reason of a defective or insufficient specification, or by reason of the patentee claiming as his own invention or discovery more than he had a right to claim as new, if the error has arisen by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, the commissioner shall * * * cause a new patent for the same invention, and in accordance with the corrected specification, to be issued to the patentee. Emphasis added.

Citing Seymour v. Osborne, 78 U.S. 516 (11 Wall.), 20 L.Ed. 33 (1870), the Court stated at 123 U.S. 98-99, 8 S.Ct. 44:

The court adheres strictly to the view, that, under the statute, the commissioner has no jurisdiction to grant a reissued patent for an invention substantially different from that embodied in the original patent * * *. The things * * * to be included in the new description and new claims are only the things which properly belonged to the invention as embodied in the original patent; that what that invention was is to be ascertained by consulting the original patent; and that, while the new description may properly contain things which are indicated in the original specification, drawings or patent-office model, (though not sufficiently described in the original specification,) it does not follow that what was indicated in the original specification, drawings or patent-office model is to be considered as a part of the invention, unless the court can see, from a comparison of the two patents, that the original patent embodied, as the invention intended to be secured by it, what the claims of the reissue are intended to cover. Emphasis added.

Parker was cited by the Supreme Court in United States Industrial Chemicals, Inc. v. Carbide and Carbon Chemicals Corp., 315 U.S. 668, 676, 62 S.Ct. 839, 843, 86 L.Ed. 1105, 53 USPQ 6, 9-10 (1942) for the proposition that:

If there be failure of disclosure in the original patent of matter claimed in the

...