Application of Ruth

• Decision Date: 01 June 1960
• Docket Number: Patent Appeal No. 6534.
• Citation: 126 USPQ 155,278 F.2d 729
• Parties: Application of Joseph P. RUTH.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

126 USPQ 155, 278 F.2d 729 (1960)

Application of Joseph P. RUTH.

Patent Appeal No. 6534.

United States Court of Customs and Patent Appeals.

June 1, 1960.

Herbert J. Jacobi, Washington, D. C. (Samuel L. Davidson, Washington, D. C., of counsel), for appellant.

Clarence W. Moore, Washington, D. C. (S. Wm. Cochran, Washington, D. C., of counsel), for Commr. of Patents.

Before WORLEY, Chief Judge, RICH, MARTIN and SMITH, Judges, and WILLIAM H. KIRKPATRICK, Judge.¹

SMITH, Judge.

This appeal is from the decision of the Board of Appeals of the United States Patent Office affirming the rejection by the examiner of claim 12 of appellant's application No. 593,783, filed June 25, 1956, for the reissue of patent No. 2,590,578, granted March 25, 1952. Claim 12 was copied by appellant from the patent to Bruniche-Olsen No. 2,713,009, granted July 12, 1955, for purposes of an interference.

While the examiner and the board stated various reasons why claim 12 is not allowable in appellant's reissue application, we find it necessary to consider only the ground which was stated by the board as follows:

"We may note, however, that appellant\'s position (page 4 of the reply brief) that the process and apparatus claims are, in effect, merely different ways of stating the same invention is hardly tenable in view of his contention that the process of claim 12 can be carried out in such different apparatuses as those of B-Olsen and appellant. The fact that a process may be carried out in apparatus other than that illustrated in the B-Olsen patent would be an indication that the process and apparatus are distinct inventions. The allowance of such a process claim in this case would appear to be an enlargement of the scope of the claims of the original patent and therefore contrary to the last paragraph of Section 251 of 35 U.S.C., since this application was not filed within two years from the grant of the original patent."

Appellant's sixth reason of appeal to this court alleges error in the holding just quoted.

The paragraph of Section 251 cited by the board provides that:

"No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent."

The appealed reissue application was filed more than four years after the grant of the original patent and accordingly claim 12 cannot be allowed if it enlarges the scope of the claims of that patent. A claim of a reissue enlarges the scope of the claims of the patent if it is broader than such claims in any respect, even though it may be narrower in other respects or, in other words, if it contains within its scope any conceivable apparatus or process which would not have infringed the original patent. In re Bostwick, 102 F.2d 889, 26 CCPA 1122; Rancourt v. Panco Rubber Co., D.C., 5 F. Supp. 185; In re Rogoff, 261 F.2d 601, 46 CCPA 733, and cases there cited.

Appellant's patent discloses and claims an apparatus for extracting sugar from beets, comprising a rotating hollow cylinder immersed in a body of liquid contained in an open tank. Sliced sugar beets are fed into one end of the cylinder by a conveyor and pass through it and out at the other end where they are removed by another conveyor. During their passage through the cylinder the beets are agitated by spiral conveyor blades mounted on the interior wall of the cylinder, and the sugar in the beets is dissolved in the liquid from which it is later recovered by means not involved here. Liquid is fed by a pipe into the cylinder in a direction opposite to that in which the beets move. A vertical partition is located in the tank midway between the ends of the cylinder and is sealed against the outer cylinder wall, so that a higher level of liquid may be maintained in the tank adjacent the end of the cylinder where the beets leave it, thus producing a gravity head which assists the flow of liquid produced by the pipe. This flow is in a...