Application of Willingham

• Decision Date: 10 October 1960
• Docket Number: Patent Appeal No. 6560.
• Citation: 127 USPQ 211,282 F.2d 353
• Parties: Application of John R. WILLINGHAM.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

127 USPQ 211, 282 F.2d 353 (1960)

Application of John R. WILLINGHAM.

Patent Appeal No. 6560.

United States Court of Customs and Patent Appeals.

July 20, 1960.

Rehearing Denied October 10, 1960.

Harness, Dickey & Pierce, Detroit, Mich. (John A. Blair, Detroit, Mich., of counsel), for appellant.

Clarence W. Moore, Washington, D. C. (George C. Roeming, Washington, D. C., of counsel), for Commissioner of Patents.

Before WORLEY, Chief Judge, and RICH, MARTIN, and SMITH, Judges.

SMITH, Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the rejection by the primary examiner of claims 3 and 6 of appellant's application No. 577,426, filed April 10, 1956 for reissue of his patent No. 2,674,908. The sole basis of the rejection is that appellant is precluded from obtaining the appealed claims in a reissue of his patent by reason of the substitution of claim 15 for unrejected claim 12 during the prosecution of his original application. In the opinion of the board, claim 12 included "the heart of the invention recited in claims 3 and 6."

For purposes of comparison, claim 3, which is typical of the appealed claims, and original claim 12 are reproduced below.

"3. A deep hole drill comprising a shank, a drill tip on the end of said shank, at least one flute in the peripheral surface of said shank and tip, said shank having an opening extending longitudinally therethrough, said tip having a hole extending from its end surface and communicating with the opening through said shank and being eccentric with respect to the longitudinal axis of said tip, said hole including the axis of said tip, and cutting edges formed at the end of said tip."

"12. A deep hole drill comprising a drill tip secured to a hollow shank, the diameter of which is less than that of the drill tip, said shank and drill tip having a plurality of equally spaced longitudinally positioned straight flutes providing longitudinally disposed lands with chip channels between the lands, the leading sides of the lands providing chip scraping edges, and said drill tip and shank having an eccentrically positioned longitudinally disposed opening extended therethrough, said opening being adapted to receive a centrally positioned pin cut by the drill tip and being eccentrically positioned provides a fluid channel at one side of the pin, said eccentrically positioned opening providing a cutting edge on one side of the tip of a greater length than a corresponding edge on the opposite side, and said cutting edge of the drill tip being positioned between the chip channels."

Appellant's device is a deep hole drill and comprises a shank having a longitudinal opening and a drill tip mounted on the shank and having a longitudinal opening communicating with the opening in the shank. The opening in the drill bit is eccentric with respect to the axis of the bit, and is large enough to include that axis. With this arrangement the rotation of the drill tip, which is provided with one or more cutting flutes, produces a hole having a solid core which is axial with respect to the bit but which is smaller than and lies within the bit opening, thus providing a longitudinal passage through which a drilling fluid may be supplied to the tip.

The issue here is whether the deletion of claim 12 from the original application and the substitution of the narrower claim 15 was due to an "error without any deceptive intention" which will permit a reissue of the patent under 35 U. S.C. § 251.

The record presented here as to the history of claim 12 in appellant's original application is extremely meager. It shows, however, that claim 12 was entered by a supplemental amendment on January 13, 1954, and was deleted and replaced by another claim by a supplemental amendment on February 10, 1954. No action by the examiner intervened between those amendments. Thus claim 12 was never rejected or otherwise acted on. The remarks which accompanied the claim when presented are not included in the record, nor are those which accompanied its deletion, except for the following paragraph:

"This amendment is submitted in view of an interview with the Examiner, in which it was thought that a claim, such as following, may place the application in condition for final action and allowance, and the Examiner is most respectfully requested, at his discretion, to substitute this claim for the claims of the application, and, if found allowable, pass the case to issue." Emphasis added.

The record does not show what prior art, if any was cited against appellant's original application or discussed at the interview which led to the substitution at the "discretion" of the examiner of claim 15 for claim 12¹. Thus, as stated in the brief for the Commissioner, "there is nothing in the record to indicate that cancelled claim 12 was definitely held unpatentable over prior art by the examiner."

The reissue provisions of the Patent Act of 1952, like the reissue provisions of the earlier patent statutes, are remedial in nature. They are based on fundamental principles of equity and fairness and should be so applied to the facts in any given case that justice will be done both to the patentee and to the public. This governing principle as long ago as 1832, before there was statutory provision for granting reissues, was stated by Chief Justice Marshall in Grant, et al. v. Raymond, 6 Pet. 218, 8 L.Ed. 376, as follows:

"* * * The great object and intention of the Patent act is, to secure to the public the advantages to be derived from the discoveries of individuals, and the means it employs are the compensation made to those individuals, for the time and labor devoted to these discoveries, by the exclusive right to make, use and sell the things discovered, for a limited time. That which gives complete effect to this object and intention, by employing the same means for the correction of inadvertent error, which are directed in the first instance, cannot, we think, be a departure from the spirit and character of the act.

* * * * * *

"It has been urged, that the public was put into possession of the machine, by the open sale and use of it under the defective specification, and cannot be deprived of it, by the grant of a new patent. The machine is no longer the subject of a patent. This would be perfectly true, if the second patent could be considered as independent of the first. But it is in no respect so considered. The communication of the discovery to the public has been made in pursuance of law, with the intent to exercise a privilege which is the consideration paid by the public for the future use of the machine. If, by an innocent mistake, the instrument introduced to secure this privilege fails in its object, the public ought

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