Constant, In re, 87-1012
| Decision Date | 13 April 1987 |
| Docket Number | No. 87-1012,87-1012 |
| Citation | 3 USPQ2d 1479,827 F.2d 728 |
| Parties | In re James N. CONSTANT. |
| Court | U.S. Court of Appeals — Federal Circuit |
James Constant, submitted pro se.
Joseph F. Nakamura, Sol., Fred E. McKelvey, Deputy Sol., Washington, D.C., and Lee E. Barrett, Associate Sol., Office of the Solicitor, Arlington, Va., submitted, for appellee.
Before BISSELL, Circuit Judge, BALDWIN, Senior Circuit Judge, and ARCHER, Circuit Judge.
The decision of the United States Patent and Trademark Office, Board of Patent Appeals and Interferences (Board), Appeal No. 679-72: (1) affirming the Examiner's rejection of all the claims of the reissue application for failure to comply with the requirements of 37 C.F.R. Sec. 1.175; the rejection of claims 1, 74, 75, 91, 102, 103, 107, 108, and 111 under 35 U.S.C. Sec. 251 (1982) as being prohibitively broader in scope than the original claims; the rejection of claims 33, 47, 58, 71, 89, 100, 104, 113, and 115 under the second paragraph of 35 U.S.C. Sec. 112 (1982); the rejection of claims 29-34, 43-46, 48, 54-57, 59, 67-70, 72-74, 85-88, 90, 96-99, 101, 102, 104, 105, 109, 112, 113, and 116-117 under the first paragraph of 35 U.S.C. Sec. 112; and (2) entering new grounds of rejection for claims 2-5, 7-37, 39-64, 66-73, 76-90, 92-101, 104-106, 109, 110, and 112-117 under 35 U.S.C. Sec. 251 as being prohibitively broader than the original claims and claims 1-5, 7-34, 47, 58, 71, 75-90, 100, 103-113, and 115 as failing to satisfy the written description requirement of the first paragraph of 35 U.S.C. Sec. 112 is affirmed.
OPINIONSince the defective reissue declaration affects all the claims in the reissue application in this case, the rejection under 37 C.F.R. Sec. 1.175 is addressed first. Appellant argues that the Board erred in its construction of 37 C.F.R. Sec. 1.175(a)(3) by requiring appellant to specify every difference between the original and reissue claims. This argument is not persuasive. The Board's decision is based on rule 175 as a whole and not just rule 175(a)(3). Appellant's declaration addressed only the excesses of the "signal processor" and failed to address the remaining "excesses and insufficiencies," as required by Sec. 1.175(a)(3). The Manual of Patent Examining Procedure (MPEP) Sec. 1444 (5th ed., Rev. 2, Dec.1985) provides that 2 ...
To continue reading
Request your trial
-
Dethmers Mfg. Co. v. Automatic Equipment Mfg.
...of the Federal Circuit Court of Appeals in Nupla [Corp. v. IXL Mfg. Co., Inc., 114 F.3d 191 (Fed.Cir.1997),] and [In re] Constant, [827 F.2d 728 (Fed.Cir.1987), cert. denied, 484 U.S. 894, 108 S.Ct. 251, 98 L.Ed.2d 209 (1987),] and the former version of 37 C.F.R. § 1.175, and the Re482 pate......
-
Dethmers Mfg. Co. v. Automatic Equip. Mfg. Co., C 96-4061-MWB.
...application to include declarations "to specify every difference between the original and reissue claims." In re Constant, 827 F.2d 728, 729, 3 USPQ2d 1479, 1480 (Fed.Cir.1987)[, cert. denied, 484 U.S. 894, 108 S.Ct. 251, 98 L.Ed.2d 209 (1987)]. In Constant, this court affirmed the decision......
-
In re McDaniel
...of its own reissue rule, citing Nupla Corp. v. IXL Manufacturing Co., 114 F.3d 191, 42 USPQ2d 1711 (Fed. Cir. 1997) and In re Constant, 827 F.2d 728, 3 USPQ2d 1479). Anticipation is a question of fact. Rapoport v. Dement, 254 F.3d 1053, 1057, 59 USPQ2d 1215, 1218 B. Analysis I. On appeal to......
-
Dethmers Mfg. Company Inc., v. Automatic Equipment Mfg Co.
...The panel decision holds that the PTO's interpretation earns no deference, following our earlier decisions in In re Constant, 827 F.2d 728, 729, 3 USPQ2d 1479, 1480 (Fed.Cir.), cert. denied, 484 U.S. 894, 108 S.Ct. 251, 98 L.Ed.2d 209 (1987), and Nupla Corp. v. IXL Manufacturing Co., 114 F.......