Application of Wesseler

• Decision Date: 20 October 1966
• Docket Number: Patent Appeal No. 7614.
• Citation: 367 F.2d 838,151 USPQ 339
• Parties: Application of William O. WESSELER.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

151 USPQ 339, 367 F.2d 838 (1966)

Application of William O. WESSELER.

Patent Appeal No. 7614.

United States Court of Customs and Patent Appeals.

October 20, 1966.

COPYRIGHT MATERIAL OMITTED

Robert W. Beach, Seattle, Wash. (George R. Jones, Washington, D. C., of counsel), for appellant.

Joseph Schimmel, Washington, D. C. (S. Wm. Cochran, Washington, D. C., of counsel), for Commissioner of Patents.

Before RICH, Acting Chief Judge, MARTIN, SMITH, and ALMOND, Judges, and Judge WILLIAM H. KIRKPATRICK.^*

SMITH, Judge.

This appeal presents two issues: first, whether appellant-patentee, in claiming less than he had a right to claim in his patent,¹ is entitled under 35 U.S.C. § 251 to a reissue of that patent containing appealed claims 6, 7, 13, 14 and 15 which are asserted to be properly commensurate with the scope of his invention; second, whether he has inserted new matter in appealed claims 4 and 5 in his application for reissue² contrary to section 251.

Claims 6, 7, 13, 14 and 15 stand rejected on the ground that they are improperly presented in a reissue application in that appellant did not show that the failure to include such claims in his patent constitutes "error" under section 251 which entitles him to secure the claims in a reissue patent. Appellant and the solicitor agree, and the Board of Appeals so found, that the subject matter defined in these claims is useful, novel and unobvious. Claims 4 and 5 stand rejected on the ground that they contain new matter. The two rejections are independent and will be treated separately.

The Invention

The invention, a cable hanger, is for supporting cables, pipes, conductors, ducts and the like. The specification states the objects of the invention as follows:

Accordingly, a principal object of this invention is to provide a hanger capable of withstanding heavy shock loading, and which is sufficiently rigid but yieldable to distribute the shock throughout the hanger.

Another object is to provide a hanger which has greater versatility in accommodating different sizes and arrangements of cables and the like and which will eliminate the need for large and costly inventories.

Still other objects are to provide a hanger which will effect a reduction in weight without a sacrifice of strength; to provide a hanger capable of expediting and reducing installation costs by permitting use of commercially available banding tools; and to provide a hanger which is less expensive to construct, install and maintain.

The specification discloses three hanger assemblies suitable for supporting a single cable, a single row of cables, or multiple rows of cables respectively. The embodiment referred to as the hanger assembly for a single row of cables provides the most suitable base for explaining appellant's invention. We will refer to Figs. 3, 4 and 7 of the reissue specification, concerning which there is no objection.

In Fig. 7, there is shown a flat sheet metal blank 24 having a base portion 25, flange portions 26, lips 35, and legs 28. The blank 24, after forming, constitutes the saddle 22 shown in Figs. 3 and 4. In these latter figures, pipes 32 are shown abutting base portion 25 and constrained by a band 33 which loops about the base portion and the pipes with fastening means shown at 36. The hanger assembly is fastened to the structure 31 by standards 30. According to the specification, "Normally, two lugs are needed for wide cable groupings."

In the embodiment showing multiple rows of cable, multiple hanger assemblies are deployed in stacked vertical arrangement with different forms of standards. In the single cable embodiment, only one lug and flange portion is shown.

The specification points out that the objects of the invention are generally achieved

* * * by the provision of a hanger that employs a flexible clamping member, preferably of band material, capable of being looped completely around both the object to be supported, such as a single cable or group of cables, and the support. The looped band can be simply and expeditiously tensioned by a commercially available banding tool and the ends of the band secured in such condition by a suitable buckle.

It is clear that important objects of the invention are the elimination of a large inventory of parts and the provision of a hanger which will reduce vibrations due to shocks.

Prosecution History

The original application as filed contained ten claims. Eventually amended claims 25, 26 and 27 were allowed and became claims 1, 2 and 3 of the issued patent. This application was prosecuted by attorneys for the Department of Navy, since appellant, for reasons not of record, appears to have licensed the invention set forth in the application to the U. S. Government and had given these attorneys the "irrevocable right to prosecute this application."

According to appellant, shortly after he received his patent "he had misgivings about the scope of protection afforded by it and consulted outside counsel." After consulting with present counsel, appellant decided to file the reissue application. This application was filed within two years from the date of the issuance of the patent. The accompanying oath states, in part, as follows:

* * * reissue of Patent 2,939,664 on the basis of this application should be granted because I consider said patent to be defective through error without any deceptive intention on my part by claiming less than I had a right to claim in the patent, the said subject matter being embodied in claims 4 to 9, inclusive, of the present application.

Said defect I believe occurred because I am not admitted to practice before the United States Patent Office and am not familiar with patent matters and relied on my attorneys for the preparation and prosecution of patent application Serial No. 531,208. While I was kept reasonably informed of the progress in the prosecution of said patent application I was unable to evaluate whether the claims, as presented during the prosecution of the patent application and as finally allowed, afforded adequate and proper protection for my invention.

The reissue application was filed with 9 claims. By amendment other claims were added until it eventually contained a total of 18 claims all of which were finally rejected by the examiner. Several of the claims were rejected on multiple grounds. On appeal, the board rendered a decision and thereafter took action on two petitions for rehearing. The ultimate disposition of the appeal by the board was to reverse certain rejections, sustain others and enter a new ground of rejection. We will set forth briefly the grounds of rejection and the board's disposition of the appealed claims in its first opinion.³

Claims 4 and 5

These claims were copied from a patent to Richardson et al.⁴ for purposes of provoking an interference. The examiner rejected these claims on the grounds of "new matter" and "as not supported by applicant's disclosure." The board sustained the examiner's rejection.

Claims 6 and 7

These claims are asserted to be similar to claims in Richardson. They were rejected by the examiner as containing new matter. As a new ground of rejection, the examiner's answer stated that the claimed subject matter was obvious under section 103. These grounds of rejection were reversed by the board. However, the board, pursuant to Rule 196(b), made a new ground of rejection under section 251, stating no "error" had been shown as justification for presenting these claims in the reissue application.

Claims 13, 14 and 15

These claims were rejected by the examiner on the grounds that the supporting oath was defective; that they incorporated new matter; and, as a new ground of rejection stated in the examiner's answer, that the claimed subject matter was obvious under section 103. The examiner withdrew the first two grounds of rejection and the board reversed the examiner's rejection based on obviousness. The board, however, entered a new ground of rejection under section 251, stating no "error" had been shown.

The board, in acting on appellant's first petition for rehearing, set forth further reasoning in support of its action and adhered to the above disposition of the appealed claims. However, certain other non-appealed claims were found to lack novelty over a prior art reference. As the board in its first decision had reversed the examiner's rejection of these claims⁵ under section 103, it was of the opinion that a new decision had been rendered.

Appellant, proceeding under Rule 197(b), submitted a second petition for rehearing. The board set forth further reasons in support of its position and affirmed its previous disposition of the appealed claims. Within 30 days after the board took action on the second petition, appellant filed a timely appeal to this court.

Thus, in summary, claims 6, 7, 13, 14 and 15 were rejected by the board under section 251 in its first opinion and the reason — in support thereof is set forth and elaborated on in all three of its opinions. Claims 4 and 5 were rejected by the examiner as containing new matter and this rejection was affirmed by the board for the reasons set forth in its first opinion. We shall now consider these two rejections and the board's reasoning with respect thereto.

Opinion

We shall first consider the issue presented as to claims 6, 7, 13, 14 and 15. The only rejection remaining as to these claims is that made by the board as a new ground of rejection. The question here is whether appellant is claiming subject matter omitted from his patent claims through "error" within the meaning of section 251.

The board, in reaching its conclusion that appellant was not entitled to relief under section 251, employed several lines of reasoning in succession. In its first opinion, the board was of the view that appellant had introduced specific limitations "for the purpose of getting a patent" and was "not entitled to a reissue to obtain any claim which omits the specific limitations...