Ball Corp. v. U.S.

Decision Date15 March 1984
Docket NumberNo. 84-680,84-680
Citation729 F.2d 1429,221 USPQ 289
PartiesBALL CORPORATION, Appellee, v. The UNITED STATES, Appellant. Appeal
CourtU.S. Court of Appeals — Federal Circuit

Joseph A. Hill, Washington, D.C., for appellant.

Allen Kirkpatrick, Washington, D.C., for appellee.

Before BALDWIN, BENNETT and SMITH, Circuit Judges.

EDWARD S. SMITH, Circuit Judge.

This case presents the question whether a patentee is barred by the recapture rule from securing, through reissue, claims to subject matter previously canceled from the original application. Plaintiff-appellee, Ball Corporation (Ball), brought suit against the Government in the United States Court of Claims under 28 U.S.C. Sec. 1498(a) (1976) for unauthorized use of the invention claimed in U.S. patent No. Re. 29,296 (July 5, 1977) to Krutsinger, et al. (the Krutsinger patent). The Government moved for summary judgment and Ball filed a cross-motion for summary judgment. Both motions were denied. 1 The Government appealed denial of its motion to this court. At the time of that first appeal, the judgment of the trial judge was not final and the issues had not been certified for appeal. In view of the uncertified, interlocutory nature of the appeal at that time, this court on March 30, 1983, issued an order dismissing the appeal for lack of jurisdiction with leave to seek certification and to appeal pursuant to 28 U.S.C. Sec. 1292(d)(2). On November 22, 1983, the trial judge certified the questions. Permission was granted on December 12, 1983, to take interlocutory appeal to this court. The Government again appeals. We conclude that the trial judge properly denied the Government's motion for summary judgment, and we remand the case for trial.

Background

The invention covered by the Krutsinger patent relates to a dual slot antenna assembly (Fig. 1) intended for use on missiles.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The antenna (Fig. 2) consists of two thin cylindrical concentric conductors [20, 24] assembled so that they are radially spaced slightly apart to form a cavity . The cavity may be void or may be filled with a dielectric material. The axial length of the conductors is substantially equal to one-half wavelength at the anticipated operating frequency of the antenna. The conductor assembly can be mounted around the outer skin of the vehicle (Fig. 1).

The circumferential edges of the cylindrical conductors define radiation slots [23, 25] (Fig. 3).

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Because the cylindrical conductors are one-half wavelength long, these radiation slots are, ipso facto, longitudinally spaced one-half wavelength apart at the anticipated operating frequency of the antenna. The radiation slots are excited by signal energy from a source and cooperate to produce an omnidirectional dipole radiation pattern. 2 Due to the one-half wavelength spacing between the radiation slots, the electromagnetic radiation emanating from the slots [R1 , R2 ] radiates in the same direction and overlaps in an additive manner to provide a stronger radiation pattern.

Signal energy is supplied to the antenna by a connector (Fig. 4).

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

In the preferred embodiment of the invention, the connection of the inner and outer cylindrical concentric conductive elements to the source is accomplished by means of a single coaxial transmission feedline. It is this feedline element around which the present controversy revolves. In particular, this case involves the number of feedlines to the outer conductor that may be properly claimed in the Krutsinger reissue patent in light of the prosecution history of the original patent application.

The Canceled Claims

Dependent claims 8 and 9 are the only claims of the original application critical to this appeal. Claim 8 includes the single feedline, whereas claim 9 does not. Claim 8 calls for "at least one" conductive lead to be connected to the edge of one of the conductors. Claim 9 requires that "a plurality of leads" be connected to the edge of one of the conductors at circumferentially spaced intervals.

In the first office action on the original application the examiner rejected claims 1-8 and indicated that claims 9 and 10 should be limited to a plurality of feedlines. The claims were amended and, on July 14, 1972, the examiner made his second rejection final. The examiner again suggested the allowability of the plurality of feedlines claims if presented in independent form. The remaining claims were rejected over the newly cited reference, Cork, U.S. patent No. 2,234,234. The Cork patent discloses a single feedline (Fig. 5) and is similar in all other material respects to Krutsinger's antenna.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Following the second office action, Ball added limitations to the claims requiring that a plurality of leads be connected to an edge of the outer conductor. These leads were recited to be spaced-apart at intervals substantially equal to one wavelength at the anticipated operating frequency of the antenna. Ball also canceled claim 7 and dependent claim 8 (the canceled claims), of the original application, which are set forth below:

7. A dual slot antenna assembly comprising: a first substantially cylindrical conductor, the axial length of which is approximately equal to one-half wavelength at the anticipated operating frequency of said assembly; a second substantially cylindrical conductor, the axial length of which is at least equal to the axial length of said first conductor, said second conductor being positioned concentrically within and radially spaced from said first conductor so as to define a pair of circumferential slots spaced one-half wavelength apart at said anticipated operating frequency and providing independent radiation patterns emanating in the same direction; and electrical signal feed means connected with said conductor for electrically exciting both of said slots.

8. An assembly according to Claim 7 wherein said feed means includes at least one conductive lead which terminates connected to the edge of one of said conductors defining one of said slots.

U.S. patent No. 3,810,183 (the original patent) issued on May 7, 1974, to Ball as assignee, on the basis of the original application, as amended.

Subsequently, Ball decided that it was entitled to claims broad enough to include the single feedline. On July 16, 1975, within the 2-year statutory period for broadened reissue provided in 35 U.S.C. Sec. 251, Ball filed a reissue application. Claims 1-4 of the reissue application comprised the four claims of the original patent. New claims 5-7 were added to the reissue application. Only the new claims, 5-7, directed to the single feedline embodiment, are in issue in this proceeding. 3

The Alleged Error

In support of its reissue application Ball stated that the original patent was partially inoperative because it claimed less than Ball had a right to claim. Ball identified as error the undue limitation of the claims of the original patent to a plurality of feedlines:

[T]he unwarranted limited scope of our original patent claims were errors [sic] that arose without any deceptive intention as a result of inadequate and/or ineffective communication with our former patent attorney, * * * and/or as a result of an inadequate understanding on our part of the potential effect of recitations in the original patent claim language under United States laws; * * * 4

U.S. patent No. Re. 29,296 issued on July 5, 1977, on the basis of the reissue application.

The Reissue Claims

Ball filed an administrative claim with the United States Navy on January 18, 1978, seeking damages and compensation for unauthorized use of, inter alia, the invention covered by claims 5, 6, and 7 of U.S. patent No. Re. 29,296. Claims 5, 6, and 7 of the reissue patent are set forth below:

5. A dual slot antenna assembly comprising:

a pair of laterally spaced-apart conductive elements separated with respect to one another by a sheet of dielectric material,

one of said conductive elements being of larger dimensions and underlying the other element and defining an electrical reference or ground surface;

said conductive elements defining a pair of radiation slots between opposing edges of said other element and said reference surface, said radiation slots being longitudinally spaced-apart a predetermined distance approximately equal to one-half wavelength at the anticipated operating frequency of said assembly,

each of which radiation slots emanates radiation therefrom such that the radiation patterns developed are in substantially the same direction;

said radiation slots having a length dimension equal to the entire length of said opposing edges, which length dimension is greater than the spacing between said conductive elements; and

a single electrical signal feed assembly integrally connected with said other conductive element at only one of said opposing edges for electrically exciting both of said radiation slots from a single signal feed junction.

6. An assembly according to claim 5 wherein said conductive elements and said sheet of dielectric material each comprise part of a single sheet of dielectric material metallically cladded on opposite sides thereof.

7. An antenna structure comprising:

an electrically conducting ground surface,

a single layer electrically conducting surface comprising both an r.f. radiator conducting area and an r.f. feedline conducting area integrally connected thereto and formed therewith,

a dielectric sheet disposed between said ground surface and the single layer electrically conducting surface,

said conducting surfaces defining a pair of radiation slots between opposing edges of said r.f. radiator and said ground surface, said radiation slots being longitudinally spaced apart by a predetermined distance...

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