Application of Rowand, Patent Appeal No. 75-549.

Citation526 F.2d 558
Decision Date23 October 1975
Docket NumberPatent Appeal No. 75-549.
PartiesIn the Matter of the Application of Ronald P. ROWAND and Harry William La Rose, Jr.
CourtUnited States Court of Customs and Patent Appeals

Louis Bernat, James R. McBride, Morgan L. Fitch, Jr., Fitch, Even, Tabin & Luedeka, Chicago, Ill., for appellants.

Joseph F. Nakamura, Sol., Jack E. Armore, Washington, D.C., for U.S. Patent and Trademark Office.

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

RICH, Judge.

This appeal is from the decision of the Patent and Trademark Office (PTO) Board of Appeals affirming the rejections of claims 6-10, all the claims in application serial No. 61,417, filed August 5, 1970, for reissue of appellants' Patent No. 3,166,688, issued January 19, 1965, entitled "Polytetrafluoroethylene Tubing Having Electrically Conductive Properties." The application is a division of application serial No. 802,295, filed February 14, 1969, for reissue of the same patent. The rejections were made under 35 U.S.C. §§ 251, 102, 103, and under the doctrine of interference estoppel. We affirm on the § 251 rejection.

The Invention

Appellants' brief describes their invention as a method for preparing polytetrafluoroethylene (Teflon) tubing having an electrically conductive inner portion formed from a mixture of "natural," i.e., unadmixed, polytetrafluoroethylene and electrically conductive particles, preferably carbon black. We need not go beyond the description of the method in claim 6 of the application, the only independent claim:

6. A method of forming a tube of polytetrafluoroethylene and the like for conducting fluids under pressure and including means for discharge of internal static electricity to the ends of the tube and grounding the same from the tube interior at said ends in order to maintain the polytetrafluoroethylene tubing performance characteristics, comprising the steps of mixing natural polytetrafluoroethylene with electrically conductive particles such that the particles are uniformly dispersed throughout the polytetrafluoroethylene in electrically conductive relation, forming a cylindrical preform having a substantially annular conformation from end to end by filling an inner portion thereof with said mixture and an outer portion thereof surrounding the inner portion exteriorly with natural polytetrafluoroethylene, relatively nonconductive in character, and extruding said preform into a thin wall tubing having an integral polytetrafluoroethylene wall structure for containing fluids under pressure uniformly within said tubing.

It is significant that the appealed claims are not directed to the tubing itself. Appellants' patent No. 3,166,688 contained claims solely to tubing. That patent was placed in interference with an application of Slade, serial No. 196,598, filed May 22, 1962, which copied all five of the claims in appellants' patent. Priority was awarded adversely to appellants as to all the claims in their patent. (The Slade application issued as patent No. 3,473,087, on October 14, 1969. Slade was used as prior art by the PTO in the § 102 and § 103 rejections.)

The Rejections

The rejection under 35 U.S.C. § 251 was made on several grounds, among which was the ground that "there is nothing in the original disclosure that would lead one to believe that Applicants intended to secure or claim an invention involving the method steps of making a tube." As authority for this ground of rejection, the examiner pointed to "the broad premise of U.S. Chemicals Co. v. Carbide Corp., 315 U.S. 668, 62 S.Ct. 839, 86 L.Ed. 1105,1 wherein it was stated that `It must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.'" The board did not specifically agree with the examiner's reasoning that the absence of a limitation of the patent claims in the reissue claims was a proper ground for rejecting the claims as "not being for the same invention as the original patent." Rather, the board provided its own rationale, which was that the method claims "are drawn to a different invention" because "the article defined in the claims of the original patent may be made in many ways."

OPINION

Since determining compliance with § 251 is the first order of business in examining a reissue application, In re Clark, 522 F.2d 623 (CCPA 1975), and since, as indicated below, we agree with this ground of rejection, it is not necessary to describe in detail or discuss the remaining grounds of rejection.

The broad premise of U.S....

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13 cases
  • Scripps Clinic & Research Foundation v. Genentech, Inc., Nos. 89-1541
    • United States
    • U.S. Court of Appeals — Federal Circuit
    • March 11, 1991
    ...of Sec. 251 is an essentially factual inquiry confined to the objective intent manifested by the original patent. In re Rowand, 526 F.2d 558, 560, 187 USPQ 487, 489 (CCPA 1975) (emphasis in On undisputed facts, the inventors established that they had claimed less than they had a right to cl......
  • Dethmers Mfg. Co. v. Automatic Equip. Mfg. Co., C 96-4061-MWB.
    • United States
    • U.S. District Court — Northern District of Iowa
    • September 29, 1998
    ...that must be undertaken to determine whether the new claims are "for the invention" originally disclosed, to paraphrase [In re] Rowand, [526 F.2d 558 (CCPA 1975),] is to examine the entirety of the original disclosure and decide whether, through the "objective eyes" of the hypothetical pers......
  • Antares Pharma, Inc. v. Medac Pharma Inc.
    • United States
    • U.S. Court of Appeals — Federal Circuit
    • November 17, 2014
    ...Surveys, Inc., 343 F.2d 381, 389 (10th Cir.1965); Riley v. Broadway–Hale Stores, Inc., 217 F.2d 530, 531 (9th Cir.1954); In re Rowand, 526 F.2d 558, 559–60 (CCPA 1975). Thus, for example, in McCullough, the Tenth Circuit held a reissue patent valid over an invalidity challenge. Referencing ......
  • Antares Pharma, Inc. v. Medac Pharma Inc.
    • United States
    • U.S. Court of Appeals — Federal Circuit
    • November 17, 2014
    ...Inc., 343 F.2d 381, 389 (10th Cir.1965) ; Riley v. Broadway–Hale Stores, Inc., 217 F.2d 530, 531 (9th Cir.1954) ; In re Rowand, 526 F.2d 558, 559–60 (CCPA 1975).Thus, for example, in McCullough, the Tenth Circuit held a reissue patent valid over an invalidity challenge. Referencing Industri......
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