Bennett, In re

Decision Date28 June 1985
Docket NumberNo. 84-778,84-778
PartiesIn re Richard N. BENNETT. Appeal
CourtU.S. Court of Appeals — Federal Circuit

Paul M. Craig, Jr., Craig & Burns, Washington, D.C., argued for appellant. With him on brief was Frederick F. Calvetti.

Henry W. Tarring, III, Associate Sol., U.S. Patent and Trademark Office, Arlington, Va., argued for appellee. With him on brief were Joseph F. Nakamura, Sol. and Jere W. Sears, Washington, D.C.

Before MARKEY, Chief Judge, FRIEDMAN, RICH, DAVIS, Circuit Judges, SKELTON, Senior Circuit Judge, BALDWIN, KASHIWA, BENNETT, MILLER, * Senior Circuit Judge, SMITH, NIES, NEWMAN, and BISSELL, Circuit Judges. **

PAULINE NEWMAN, Circuit Judge.

This appeal is from the decision of the United States Patent and Trademark Office (PTO) Board of Appeals (Board), rejecting claims 24-39 of reissue patent application Serial No. 036,745 of Richard N. Bennett under 35 U.S.C. Sec. 251, on the ground that a broadening reissue application that was filed within two years of the patent's issue date but was erroneously filed by the assignee could not be corrected by a declaration of the inventor filed more than two years after the patent's issue date. We reverse.

Background

The application at bar was filed on May 7, 1979 for reissue of U.S. Patent No. 4,073,322 for a "High Speed Filling Machine" issued February 14, 1978 to National Instrument Company, Inc. as assignee of Richard N. Bennett. The invention is a machine for filling containers with fluid, which by its structure and operation is asserted to increase the filling rate substantially as compared with previously known machines. It is pertinent that the claims as issued describe a "continuously running conveyor means" and a "continuously running, in operation, conveyor belt". The reissue application introduced new claims which used the unqualified words "conveyor means". A purpose of the change to "conveyor means" was to cover intermittent as well as continuous running of the conveyor.

The application for reissue was filed fifteen months after the grant of the original patent, and was executed by Mr. Sidney Rosen as president of National Instrument Company, identifying Richard N. Bennett as the inventor. Fifteen months thereafter, hence thirty months after the original application was issued, the PTO's first Office Action informed appellant that since the reissue application sought to enlarge the scope of the claims it was required to be signed by the inventor in accordance with 35 U.S.C. Sec. 251. A declaration by the inventor, Richard N. Bennett, was submitted. The Examiner accepted this declaration, but rejected the claims on prior art. Appellant advises that the principal purpose of the reissue application was to bring before the PTO prior art not previously considered, but raised in pending litigation.

The Board reversed the Examiner's rejections on prior art, but pursuant to 37 C.F.R. Sec. 1.196(b) reversed the Examiner's acceptance of Bennett's substitute declaration, stating that the application as filed failed to comply with the requirements of 35 U.S.C. Sec. 251, and that the matter was not correctable, distinguishing A.F. Stoddard & Co., Ltd. v. Dann, Commissioner of Patents, 564 F.2d 556, 195 USPQ 97 (D.C.Cir.1977) (Markey, C.J., sitting by designation).

The pertinent paragraphs of 35 U.S.C. Sec. 251 provide:

[p 3]: The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent.

[p 4]: 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.

I.

Appellant first challenges the Board's conclusion that some of the proposed reissue claims seek to enlarge the scope of the claims of the original patent. Appellant contends that the Board admitted that the difference in description of the conveyor is directed to a non-essential feature which adds no patentability to the claims, and points to the Examiner's statement that "[t]he claimed combination with an intermittent moving conveyor is not patentably distinct from the claimed combination with a continuously running conveyor". Appellant argues further that other parts of the claims were limited, so that overall the claims are not of enlarged scope.

The declaration of Mr. Rosen as president, accompanying the reissue application, stated that the original patent contained "limitations unduly restrictive" and that it "failed to cover the modified structure disclosed" in the specification. The subsequent declaration of Richard Bennett acknowledged that newly submitted claim 24 was "broader than claim 23".

As stated in In re Rogoff, 261 F.2d 601, 603-04, 120 USPQ 185, 186 (CCPA 1958), "a claim is broadened if it is broader in any respect than the original claim, even though it may be narrowed in other respects". See also Ball Corp. v. United States, 729 F.2d 1429, 1438, 221 USPQ 289, 296 (Fed.Cir.1984), and citations therein.

The Board correctly concluded that the reissue application contains broadened claims. "Conveyor means" is broader in scope than "a continuously running, in operation, conveyor belt". It is immaterial whether the claimed invention with an intermittently moving conveyor is patentably distinct from one with a continuously running conveyor, for it is plain that "conveyor means" is broader than both. We also agree with the Board that the execution of the broadening reissue application by the assignee's president instead of by the inventor did not comply with 35 U.S.C. Sec. 251.

The reissue application was filed within the two-year period set in 35 U.S.C. Sec. 251, fourth paragraph, for applications which seek to enlarge the scope of the claims. The question before us does not concern the addition of broadened claims after the two years had passed, as discussed in In re Doll, 419 F.2d 925, 164 USPQ 218 (CCPA 1970). The sole question is whether the defective execution of the timely filed reissue application may be corrected after those two years had passed.

The declaration accompanying the application identified Richard N. Bennett as the inventor; its flaw is that the request for reissue was signed only by an officer of the patent owner, and not also by Mr. Bennett. 35 U.S.C. Sec. 251, third paragraph, authorizes an assignee of the entire interest in a patent to apply for a reissue to correct errors and to narrow the scope of the claims, without oath or declaration or concurrence by the inventor. Signature of the inventor is required only when the reissue seeks to enlarge the scope of the claimed invention, by analogy to the requirement that the inventor sign an original application for patent:

The provisions of this title relating to applications for patent shall be applicable to applications for reissue....

Nevertheless Mr. Bennett, the inventor, could not have applied for the reissue on his own, whether or not the application sought broadened claims, as the signature of a representative of National Instrument Co. was a necessary part of any reissue application. 37 C.F.R. Sec. 1.172(a).

The Board concluded that the substitute declaration by the inventor Bennett, which was filed more than two years after the grant of the original patent, could not cure the defect in the reissue application, citing the absence of statutory authorization to the PTO to correct the defect. We hold that the patent statute and judicial precedent require a contrary result.

II.

Several provisions of the patent law enable correction of errors, to avoid jeopardizing a patent-seeker's rights and interest. 35 U.S.C. Sec. 26, for example, provides:

Any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or other regulation to be executed in a specified manner may be provisionally accepted by the Commissioner despite a defective execution, provided a properly executed document is submitted within such time as may be prescribed.

The legislative history of this section attests that Congress had in mind the dangers that overly-rigid bureaucratic practices could and did pose for patent applicants. The House Report states that before enactment of this provision, an irregularity in a patent application could bring the application process to a halt. This could "jeopardize the date of priority of ... invention" and result in "serious repercussions, including the loss of patent rights ...." H.R.Rep. No. 1181, 88th Cong., 2d Sess. 2, reprinted in 1964 U.S.Code Cong. & Admin.News 2122, 2123. Note also the amendment to allow late payment of issue fees, discussed in S.Rep. 1401, 93d Cong., 2d Sess. 2, reprinted in 1974 U.S.Code Cong. & Admin.News 7137, 7138, whereby 35 U.S.C. Sec. 151 was amended to "eliminate need for private bills seeking relief from the rigorous application of existing law".

The principle behind such remedial provisions is to allow correction of those statutory rigors for which the penalty may be excessive under the circumstances. These relief provisions attempt to strike a balance between the need for consistency in administration of a complex statute, even if consistency occasionally results in forfeiture of substantive rights, and the need for fairness, which may place on the administering body the occasional burden of exercising discretion to avoid an unjust result. The balance chosen requires continual evaluation in light of the purposes served by the statute.

It is not in the public interest to bar all possibility of legal or equitable relief, when such is sought to correct a harmless error. Thus we consider the reality of the practice at issue, guided by legislative and judicial precedent, and mindful of the interest of justice.

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