Ex parte Arthun
| Decision Date | 20 October 2016 |
| Docket Number | Appeal 2016-006176 |
| Parties | Ex parte NILS ARTHUN Application 14/064,279 Technology Center 1700 |
| Court | Patent Trial and Appeal Board |
Before CHUNG K. PAK, N. WHITNEY WILSON, and JEFFREY R. SNAY Administrative Patent Judges.
[1]
SNAY Administrative Patent Judge.
Appellant Merck Chemicals and Life Science AB,[2] appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant filed this application seeking Reissuance of U.S. Patent No. 7,959,754.[3] Particularly, Appellant seeks to correct a purported error in the '754 patent specification by changing the priority claim from "a divisional" to "a divisional reissue" of Reissue Application Ser. No. 11/305,813 ("the '813 application").[4] The sole issue in dispute is whether that error is correctable under 35 U.S.C.§251.
The Examiner maintained the following grounds of rejection:[5]I. Claims 1-14 stand rejected under 35 U.S.C. § 251 as being based upon a defective reissue declaration.
II. Claims 1-14 also stand rejected under 35 U.S.C. § 102(b) as unpatentable over US 6,779,575 ("the '575 patent"), issued on August 24, 2004.
III. Claims 1-14 stand provisionally rejected on the ground of non-statutory obviousness-type double patenting over each of US Application No. 13/613,669,13/536,199, and 13/613,658.
With regard to Rejection I, the Examiner found that the specified error in Appellant's Reissue Declaration-that the '835 application claimed priority as a divisional application rather than a divisional reissue application-is not an error "upon which a reissue can be based." Final Act. 7. In support of that finding, the Examiner relied on the fact that the '835 application filing papers included a "utility application transmittal form PTO/SB/05 instead of a reissue transmittal form PTO/SB/50." Id. at 8. The Examiner additionally relied on the lack of a "notice of multiple reissue applications" which would have been required under 37 C.F.R. 1.77(a) had the '835 application been intended as a Reissue Application. Id. Finally, the Examiner referred to a series of events arising during prosecution which should have alerted the Applicant to the fact that the application was being handled as a divisional application and not a divisional reissue application.[6]Id. In light of these facts, the Examiner found that the original choice to file the '835 application as a regular divisional, rather than as a divisional reissue, was deliberate and therefore not correctable under 35 U.S.C. § 251. Id. at 7-9; Ans. 13 ().[7]
Appellant counters that the '835 application filing papers included indicia consistent with the filing of a Reissue Application-namely, a reissue oath/declaration pursuant to 37 C.F.R. 1.175 and a specification consisting of a copy of the '575 patent in double-column format.[8] App. Br. 6-7.
Part (a) of the reissue statute provides:
Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
35 U.S.C § 251(a) (2011). "The statute is remedial in nature, based on fundamental principles of equity and fairness, and should be construed liberally." In re Weiler, 790 F.2d 1576, 1579 (Fed. Cir. 1986). But, the statute's reach is not without limits. Id. ("[N]ot every even or circumstance that might be labeled 'error' is correctable by reissue."); In re Serenkin, 479 F.3d 1359, 1362 (Fed. Cir. 2007) ( that "the deliberate action of an inventor or attorney during prosecution generally fails to qualify as a correctable error under § 251").
Here, we find that the reissue oath/declaration which accompanied the '835 application filing papers is sufficient to support Appellant's claim that the '835 application was intended to be filed as a reissue application, and, correspondingly, that the priority claim as a divisional application rather than a divisional reissue application was made in error. The filing of the '835 application in double-column format is consistent with that finding. Our decision also is informed by the fact that the '835 application was filed more than one year after issuance of the '575 patent, such that any claim in a non-reissue divisional application necessarily would be barred as unpatentable under 35 U.S.C. § 102(b) over the '575 patent.[9] In other words, the filing of the '835 application as a regular divisional application in this instance would have been pointless. Because a preponderance of the evidence of record supports that the priority claim in the '835 application was made in error, and such error renders the resulting '754 patent wholly or partly inoperative or invalid, we find that the error specified in this Reissue Application is correctable pursuant to § 251.
For that reason, we do not sustain Rejection I.
However, we do not agree that the error which Appellant seeks to correct by reissue merely "is an error appearing in the priority claim in the specification of the '754 Patent." App. Br. 5. As the Examiner correctly noted, the consequence of correcting the erroneous priority claim also changes the status of the '754 patent from one originating from a regular utility application to one originating from a reissue application. Final Act. 9;
Ans. 14. As such, the '754 patent claims sought to be reissued in this case must be examined for compliance with all of the provisions relating to a reissue application, including: the contents of any Inventor's oath or declaration for a reissue application (37 C.F.R. § 1.175); the proper presentation of the specification, including the claims, and any amendments particular to reissue applications (37 C.F.R. § 1.173); the sufficiency of any notice that more than one reissue application has been filed (37 C.F.R. 1.177); and the omission of new matter (35 U.S.C. § 251(a)). Moreover, the reissuance of method claims relative to the device claims issued in the original '575 patent requires consideration of whether the reissue application satisfies the written description requirement of 35 U.S.C. § 112. See Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354, 1362 (Fed. Cir. 2014) ( ) (internal quotations and citation omitted). Because the '754 patent was seemingly issued following examination under non-reissue provisions, compliance with these reissue-specific provisions were not addressed and are not before us in this appeal.
Because Appellant's correction through this Reissue Application results in this application being a divisional reissue of the '575 patent, the '575 patent is not prior art within the meaning of 35 U.S.C. § 102(b). Accordingly, we also do not sustain Rejection II.
Appellant does not contest the Examiner's three separate provisional rejections, except to state that terminal disclaimers will be filed and an application upon which one of the provisional rejections...
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