Application of Oda, Patent Appeal No. 8466.

• Decision Date: 01 July 1971
• Docket Number: Patent Appeal No. 8466.
• Citation: 443 F.2d 1200,170 USPQ 268
• Parties: Application of Ryohei ODA et al.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

170 USPQ 268, 443 F.2d 1200 (1971)

Application of Ryohei ODA et al.

Patent Appeal No. 8466.

United States Court of Customs and Patent Appeals.

July 1, 1971.

Arnold G. Gulko, Arlington, Va., attorney of record, for appellants.

S. Wm. Cochran, Washington, D. C., for Commissioner of Patents, R. E. Martin, Washington, D. C., of counsel.

Before RICH, ALMOND, BALDWIN and LANE, Judges, and RE, Judge, United States Customs Court, sitting by designation.

RICH, Judge.

This is a reissue case involving only questions of law as to compliance with 35 U.S.C. § 251. Patentability of the subject matter of the appealed claims, which are directed to chemical compounds, with respect to novelty, unobviousness, and utility, is not in issue. This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claims 1-3 of application serial No. 574,260, filed August 5, 1966, to reissue patent No. 3,244,730, granted April 5, 1966, on application filed July 17, 1963. We reverse.

The Invention

The invention sufficiently appears from the appealed claims:

1. 5-nitro-3, 3-bis-(4-dimethylaminophenyl)-phthalide.

2. 5-acetylamino-3, 3-bis-(4-dimethylaminophenyl)-phthalide.

3. 5-benzoylamino-3, 3-bis-(4-dimethylaminophenyl)-phthalide.

The above phthalides are said to be useful as intermediates for conversion into basic dyes and also in pressure-sensitive copying papers of known construction because they are reactive with acidic clays to form a color.

The application for the original patent was prepared by translation into English from corresponding Japanese applications filed in May 1960 and July 1962, which are identified in the reissue oath. The oath points out that in the translation certain errors were made which are discussed in more detail later. The most important error was that "nitric acid" was mistranslated "nitrous acid." Of less importance, "ferrous oxide" in the U. S. application should have been "iron."

These errors were known to applicants' U. S. attorney before the patent issued. He thought he would be able to have them corrected, before the patent issued, by an amendment under Patent Office Rule 312, pertaining to amendments after allowance, which he filed February 2, 1966, but the examiners recommended against and refused entry. Four months after the issuance of the patent containing the translation errors, which were thought to affect its validity and therefore its adequacy to protect the compounds of the above claims by reason of an insufficient or inaccurate description of how to make them, under the first paragraph of 35 U.S.C. § 112, this application for reissue was filed.

The Rejection

As background for understanding the rejection we set forth the text of 35 U. S.C. § 251, first paragraph, the rest of the section being irrelevant here (added emphasis ours):

§ 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. No new matter shall be introduced into the application for reissue.

The posture of the case on appeal, so far as amendments to the specification are concerned, is that in three instances in the descriptive portion of the specification, including a specific example, the word "nitrous" is changed to "nitric" and in Example 2 the words "ferrous oxide" were first changed to "iron" and then to "reducing agent."¹ Additionally, three process claims (4-6) which contained references to "nitrous acid" have been cancelled or deleted from the patent.

The Examiner's Answer states:

Claims 1-3 stand rejected as being based on a specification containing new matter. 35 U.S.C. § 251; 35 U. S.C. § 112. The changes of "nitrous" to "nitric" and "ferrous oxide" to "iron" to "reducing agent" are deemed to be drawn to new matter. The specification is considered defective since without the introduction of new matter, the specification is drawn to inoperative embodiments. Applicants are not permitted to add new matter in order to disclose what they intended even though it can be shown that it was part of the original invention and had been inadvertently omitted from the original specification. The fact that the original specification is at variance with the Japanese application * * * does not provide the proper basis for such a correction. Ex parte Bondiou et al., 132 USPQ 356 Pat.Off.Bd.App.1961. Since both nitrous acid and nitric acid are known to effect the nitration process, the error would not be considered obvious by one of ordinary skill in the art.

This rejection can also be construed as being based on a defective oath. The oath should state facts and not conclusions or opinions. Applicants\' oath, e. g., at page 2, line 1, in referring to the errors in translation as "obvious", fails to comply with these requirements. M.P.E.P. 1401.08; Ex parte Pfaudler, 1883 CD 1, 23 O.G. 269; Ex parte Timkin, 1883 CD 58, 24 O.G. 1089.

In affirming, the board first pointed out that the appealed claims correspond "exactly to the identically numbered claims of appellants' original patent," thus making it clear that there will be no change whatever in the invention claimed by virtue of reissue, if permitted. The board pointed out that the whole controversy revolves around the section 251 provisions relating to "error without any deceptive intention" and "new matter." With an extensive effort to deflate all of appellants' arguments to the contrary, the board held that the change of "nitrous" to "nitric" would be "new matter."

The board next took up the question of "error" under section 251, a question the examiner had not raised at all. Indeed, the Examiner's Answer appears throughout to assume there was error and nothing was said about deceptive intention. The board, however, seemingly sua sponte, made a new approach to the question of whether there was "error without any deceptive intention" and reached the conclusion that "appellants' showing of `error' under 35 U.S.C. § 251 must be held to be insufficient." This new holding seems to have been based not on the absence of error but on appellants' attorney's handling of the prosecution — his "course of action" — in permitting the patent to issue, knowing of the errors in it, and in the time he took for various matters, such as discussing the errors with another attorney and getting information from Japan and from a local expert. Frankly, we do not follow the board's reasoning on this point.

Finally the board took up the other question of whether the changes involving the "ferrous oxide" amounted to insertion of "new matter." The board disagreed with the examiner in considerable part in finding that the simple deletion of the words was not in violation of section 251. It said:

No new matter would be involved in the cancellation, and the term "reducing agents" is found in the original application. Moreover, the record does not reveal that the error in "ferrous oxide" was known as early as the error in "nitrous acid."

It nevertheless found "a new matter aspect" in the changes made because the deletion of "ferrous oxide" from Example 2 and its replacement by "reducing agent" would cause the example to be somewhat confusing. On this point, therefore, the "new matter" issue would seem to be converted into the question whether the creation of confusion or ambiguity by a change in a specification constitutes a violation of the prohibition against "new matter."

OPINION

This court on previous occasions, particularly since the effective date of the 1952 Patent Act, has observed that the reissue statute is based on fundamental principles of equity and fairness and that, as a remedial provision, intended to bail applicants out of difficult situations into which they get "without any deceptive intention," it should be liberally construed so as to carry out its purpose to the end that justice may be done to both patentees and the public. In re Willingham, 282 F.2d 353, 48 CCPA 727 (1960); In re Wesseler, 367 F.2d 838, 54 CCPA 735 (1966). Both of these cases were cited with approval, for the proposition we have stated, in Reeves Bros., Inc. v. U. S. Laminating Corp., 282 F.Supp. 118, 127 (E.D.N.Y.1968). At the same time we are realistic enough to appreciate that sharp applicants must be watched with a sharp eye. This is nothing new in the legal field.

The problem here is whether the changes appellants wish to make constitute "new matter" within the meaning of section 251.² "New Matter" is a technical legal term in patent law — a term of art. Its meaning has never been clearly defined for it cannot be. The term is on a par with such terms as infringement, obviousness, priority, abandonment, and the like which express ultimate legal conclusions and are in the nature of labels attached to results after they have been reached by processes of reasoning grounded on analyses of factual situations. In other words, the statute gives us no help in determining what is or is not "new matter." We have to decide on a case-by-case basis what changes are prohibited as "new matter" and what changes are not.

In a sense, anything inserted in a specification that was not there before is new to the specification but that does not necessarily mean it is prohibited as "new matter."

Robinson On Patents (1890), § 561, in discussing amendment of applications, says:

No new matter can under any circumstances be introduced by amendment. New matter is that which is not found in the specification, drawings, or model, as first filed, and which involves a departure

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