Application of Hay, Patent Appeal No. 76-558

Citation534 F.2d 917
Decision Date20 May 1976
Docket Number76-559.,Patent Appeal No. 76-558
PartiesApplication of Bernard F. HAY.
CourtUnited States Court of Customs and Patent Appeals

Donald H. Zarley, Michael G. Voorhees, Zarley, McKee, Thomte, Voorhees & Sease, Des Moines, Iowa, attorneys 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.

RICH, Judge.

These appeals, consolidated for argument and decision, are from decisions of the Patent and Trademark Office Board of Appeals affirming the final rejection of the single claim in each of appellant's reissue applications.1 We affirm.

The invention, as indicated by the application titles, relates to an electrical resistor (Appeal No. 76-559) and a method of making it (Appeal No. 76-558), in which the resistor element is embedded in an insulating plastic within a housing by forcing fluid plastic into the housing under pressure. A detailed description of the invention is not necessary to an understanding of these cases.

Appellant's desire to have his patents reissued stems from a judgment in an infringement suit holding the original patents invalid for failure to comply with 35 U.S.C. § 112, first paragraph.2Dale Electronics, Inc. v. R. C. L. Electronics, Inc., 356 F.Supp. 1117, 178 U.S.P.Q. 262 (D.N.H.), affirmed, 488 F.2d 382, 180 USPQ 225 (CA 1 1973). The district court found that appellant's patents did not disclose the only plastic he had found would work, Rogers RX 600, and that only persons skilled in the plastics molding art (not the electrical resistor art to which the court found the invention pertained) could determine what plastics within the general categories disclosed by appellant would produce the desired results, and even that only after experimentation. 356 F.Supp. at 1125-26, 178 USPQ at 267-68. The court of appeals characterized this holding as based on the "best mode" requirement of § 112. 488 F.2d at 388-89, 180 USPQ at 229-30. Appellant filed his reissue applications after the district court decision for the purpose of adding the following sentence to each specification:

An example of a preferred molding compound is a phenolic compound reinforced with glass fibers which is manufactured by Rogers Corporation, Rogers, Connecticut, under the product designation RX 600.

The application involved in Appeal No. 76-559 was later amended to describe RX 600 further. The examiner rejected the applications under 35 U.S.C. § 251, first paragraph, last sentence, on the ground that the quoted insertion was "new matter."3 The board affirmed the rejection in each case, holding that the insertions were more than mere clarification of matter already disclosed in the patents and that the erroneous failure to disclose the matter originally was not manifest to those skilled in the art or caused by drafting errors or the unfamiliarity of the inventor with official forms, citing In re Oda, 443 F.2d 1200, 58 CCPA 1353, 170 USPQ 268 (1971). A separate rejection of the claim on appeal in No. 76-558 under 35 U.S.C. § 112 was also affirmed by the board, but it is not necessary to discuss it.

OPINION

Regardless of whether the patents were held invalid for lack of enabling disclosure, as appellant contends, or for failure to disclose the best mode, we agree with the new matter rejections under § 251. We recognize that the reissue provisions of the Patent Act should be construed liberally in light of their remedial purpose (Fontijn v. Okamoto, 518 F.2d 610, 186 USPQ 97 (CCPA 1975); In re Oda, supra), but this liberality has never been construed to permit insertion of new matter in contravention of the § 251 proscription thereof. As P. J. Federico remarked in his Commentary on the New Patent Act, 35 USCA at 44,

In the old statute one of the grounds of reissue was stated to be "a defective or insufficient specification" whereas the expression in the new statute is "a defective specification or drawing," but the room for correction here is not very great since new matter cannot be introduced.

See In re Disch, 112 F.2d 794, 798, 27 CCPA 1321, 1326, 46 USPQ 62, 66 (1940). The new matter provision of § 251 is thus a limit on the correction of errors, even where those errors were made in good faith as appellant argues was the case.

We discussed the new matter provision of § 251 at great length in In re Oda, supra, and see no need to repeat that discussion here, except to emphasize that the term "new matter" presumably has the same meaning in § 251 as it does in the last sentence of 35 U.S.C. § 132, which prohibits introducing "new matter" into the disclosure of the invention by amendment.

In these cases the invention was not properly disclosed in either patent, and the insertions proposed by appellant are necessary, as appellant effectively admits in the reissue oaths, to bring the disclosures into compliance with § 112. This is not a case in which the specification may be properly amended to disclose functions, properties, theories, or advantages inherent in what was originally disclosed. See In re Smythe, 480 F.2d 1376, 178 USPQ 279 (CCPA 1973). Nor is this a case like In re Oda, supra, in which the error in disclosure sought to be corrected was found to be manifest to those skilled in the art. The whole point of the determination of invalidity by the district court and the court of appeals was that the original disclosures were deficient in a way not apparent, whether explicitly, implicitly, or inherently, to those skilled in the pertinent art. That appellant may now know of plastics that work other than RX 600 does not make his original disclosures any less fatally defective. The cases relied on by appellant, e. g., Miller v. Bridgeport Brass Co., 104 U.S. 350, 26 L.Ed. 783 (1881), and Triax Co. v. Hartman Metal Fabricators, Inc., 479 F.2d 951, 178 USPQ 142 (CA 2, 1973), are distinguishable because in each case the reissue corrected or clarified matter which had already been disclosed but in a defective fashion. Here appellant admitted before ...

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