Clement, In re

Decision Date12 December 1997
Docket NumberNo. 97-1202,97-1202
Citation131 F.3d 1464,45 USPQ2d 1161
PartiesIn re CLEMENT.
CourtU.S. Court of Appeals — Federal Circuit

Lawrence M. Green, Wolf, Greenfield & Sacks, P.C., Boston, MA, argued for appellant. With him on the brief was Christopher S. Schultz.

John M. Whealan, Associate Solicitor, Office of the Solicitor, Patent and Trademark Office, Arlington, VA, argued for appellee. With him on the brief were Nancy J. Linck, Solicitor, Albin F. Drost, Deputy Solicitor, and Scott A. Chambers, Associate Solicitor.

Before MAYER, Circuit Judge, SMITH, Senior Circuit Judge, and CLEVENGER, Circuit Judge.

MAYER, Circuit Judge.

Jean-Marie Clement appeals the decision of the United States Board of Patent Appeals and Interferences sustaining the rejection of claims 1-18 and 49-52 in reissue application Serial No. 08/054,951 under 35 U.S.C. § 251 (1994). Because the board correctly applied the recapture rule to bar claims 49-52 and because claims 1-18 alone cannot support the reissue application, we affirm in part and vacate in part.

Background

This case is about U.S. Patent No. 4,780,179 (the '179 patent) issued to Jean-Marie Clement. The '179 patent claims a method for treating waste paper that removes "stickies," such as glues and plastics, under a first set of environmental conditions, before removing inks under a second set of environmental conditions.

The '179 patent issued from application Serial No. 06/822,943 (the '943 application), which was a continuation of application Serial No. 06/482,623 (the '623 application). During prosecution, Clement amended the claims to overcome U.S. Patent No. 4,360,402, issued to Ortner et al. (Ortner), and an article written by Michael Burns entitled "Waste Paper Preparation Plant and Systems," published in the June/August 1973 issue of Paper Technology (Burns). The broadest of the '623 application's claims, original claim 1, recites:

A method of treating a mixture of printed and contaminated waste paper in order to produce pulps for the use in the manufacture of pulp and paper boards, which method comprises:

(a) forming an aqueous pulp of said waste material at low temperature, low specific mechanical energy, thereby forming a pulpable slurry and releasing the non-ink contaminants from the surface of the paper but without dispersing them inside the fibrous suspension;

(b) separating the non-ink contaminants from the pulp by mechanical separation, without the use of froth floatation or solvent extraction or other process, using conventional screens and centrifugal cleaners and without any further application of strong shear forces to the pulp;

(c) softening of the ink particles vehicles and weakening of their bondings with the surface of the fibres by submitting the pulp at a consistency of more than 15% at the simultaneous actions of (A) high temperature--between 85 and 130? C.--(B) high shear forces and (C) at least one de-inking agent, under alcaline [sic] conditions;

(d) detaching the ink particles from the surface of the fibres and dispersing them into the fibrous suspension by submitting the pulp to the simultaneous actions of (A) high temperature--between 85 and 130? C.--(B) high shear forces and (C) at least one chemical dispersing agent, under alcaline [sic] conditions;

(e) removing the free ink particles by means of the most appropriate known method and up to the degree of brightness required by the final use of the pulp.

In an effort to overcome Ortner, Clement submitted a preliminary amendment in the '943 application dated January 27, 1986, which replaced original claim 1 with claim 42. Claim 42 is limited to: (1) carrying out step (a) at room temperature; (2) using mechanical energy less than 50 KW.H/Ton in step (a); (3) removing the ink by applying a combination of high temperature between 85 and 130 C, mechanical energy greater than 50 KW.H/Ton, and a de-inking or chemical dispersing agent under alkaline conditions in steps (c) and (d), respectively; and (4) limiting the duration of steps (c) and (d) to between two and ten minutes. In this preliminary amendment, Clement argued that Ortner's process could not apply simultaneously the higher temperature and larger shear force (mechanical energy greater than 50 KW.H/Ton) recited in steps (c) and (d). Clement also argued that using a higher temperature in Ortner's process would prevent the final product from having the necessary brightness.

In response, the examiner withdrew the Ortner reference, but relied on Burns until Clement's amendments dated December 23, 1986, and June 29, 1987, and an examiner's amendment dated May 16, 1988, added the following limitations: (1) steps (a) and (b) remove substantially all the non-ink contaminants including the stickies; (2) steps (c) and (d) include strong alkaline conditions having a pH of at least 9; (3) the brightness of the final pulp in step (f) is at least 59 ISO; and (4) step (b) takes place at room temperature. The table at Appendix A shows claim 42 before the last two amendments. In his December 23, 1986, amendment, Clement specifically argued that Burns fails to disclose the strong alkaline conditions having a pH greater than 9 that he added to steps (c) and (d). In his June 29, 1987, amendment, he continued to traverse the examiner's assertion that Burns discloses removing the stickies at room temperature through the application of mechanical energy lower than 50 KW.H/Ton. The patent issued on October 25, 1988, with claim 42 becoming claim 1, as shown in the table at Appendix B.

On October 18, 1990, Clement filed reissue application Serial No. 07/600,012 (the '012 application). During prosecution of the '012 application, he admitted that he added "very specific process parameters" to issued claim 1 during prosecution of the '943 application "in order to distinguish over the prior art." Clement later abandoned the '012 application in favor of continuation reissue application Serial No. 08/054,951 (the '951 application), presently on appeal. The '951 application includes claims 1-18, which correspond to claims 1-18 of the '179 patent, and claims 49-52, which are admittedly broader than the '179 patent's claims. In his reissue declaration, Clement stated that as a result of his failure to understand the claims and his attorney's failure to appreciate the scope of his invention, claims 1-18 of the '179 patent are unduly limited because "step (a) recites forming the first fibrous suspension at room temperature by applying specific mechanical energy lower than 50 KW. H/Ton." In addition, "the temperature, mechanical energy and pH conditions set forth in steps (c) and (d)" unduly limit claim 1 and claims 2-18, which depend from it. Claim 49 eliminates these limitations and the room temperature limitation in the first claim's step (b). The table at Appendix B compares reissue claim 49 with claim 1 of the '179 patent with differences italicized.

The examiner rejected claims 49-52 under 35 U.S.C. § 251 * for being broadened in a reissue application filed outside the two year statutory period. The examiner also rejected claims 1-18 and 49-52 under section 251 for lacking a basis for reissue because recapture is not an error so correctable. The examiner found the reissue declaration defective under 37 C.F.R. § 1.175 (1997) because it failed not only to mention the error in step (b), but also to explain sufficiently how any of the errors arose. The examiner determined that these defects were not curable because the recapture rule applied. Clement appealed the examiner's final rejection to the United States Board of Patent Appeals and Interferences (the board).

The board determined that Clement filed his broadening reissue application timely. It further found that during prosecution of the '179 patent, Clement added temperature, mechanical energy, and pH limitations to overcome prior art rejections. The board noted that the temperature limitation in step (a) and the temperature and mechanical energy limitations in steps (c) and (d) "were argued by [Clement] to be features not suggested by Ortner or Burns and ... were accepted by the examiner as distinguishing over these references." It concluded that Clement implicitly admitted that "broader claims not restricted to ... [these limitations] were not patentable over the prior art represented by Ortner." The board found that claims 49-52 do not include these limitations and concluded that the reissue claims seek to broaden the patent in a manner directly pertinent to subject matter that Clement deliberately surrendered to overcome prior art rejections. It therefore sustained the rejection of claims 49-52 for failing to comply with 35 U.S.C. § 251, and the rejection of claims 1-18 and 49-52 based on a defective reissue declaration. Clement appeals.

Discussion

Determining whether an applicant has met the statutory requirements of 35 U.S.C. § 251 is a question of law, which we review de novo. Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 994, 27 USPQ2d 1521, 1524 (Fed.Cir.1993). This legal conclusion is based on underlying findings of fact, which we sustain unless they are clearly erroneous. In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1312 (Fed.Cir.1996); Mentor, 998 F.2d at 994, 27 USPQ2d at 1524. An attorney's failure to appreciate the full scope of the invention qualifies as an error under section 251 and is correctable by reissue. In re Wilder, 736 F.2d 1516, 1519, 222 USPQ 369, 370-71 (Fed.Cir.1984). Nevertheless, "deliberate withdrawal or amendment ... cannot be said to involve the inadvertence or mistake contemplated by 35 U.S.C. § 251." Haliczer v. United States, 174 Ct.Cl. 507, 356 F.2d 541, 545, 148 USPQ 565, 569 (1966). The recapture rule, therefore, prevents a patentee from regaining through reissue the subject matter that he surrendered in an effort to obtain allowance of the original claims. See Mentor, ...

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