Graff, In re

• Decision Date: 14 April 1997
• Docket Number: No. 96-1349,96-1349
• Citation: 42 USPQ2d 1471,111 F.3d 874
• Parties: In re Paul GRAFF.
• Court: U.S. Court of Appeals — Federal Circuit

Page 874

111 F.3d 874

42 U.S.P.Q.2d 1471

In re Paul GRAFF.

No. 96-1349.

United States Court of Appeals, Federal Circuit.

April 14, 1997.

Lawrence M. Green, Wolf, Greenfield & Sacks, P.C., Boston, MA, argued for appellant. With him on the brief was Richard F. Giunta.

Nancy J. Linck, Solicitor, Patent and Trademark Office, Arlington, VA, argued for appellee. With her on the brief were Albin F. Drost, Deputy Solicitor, and James T. Carmichael, Associate Solicitor.

Before NEWMAN, LOURIE, and RADER, Circuit Judges.

PAULINE NEWMAN, Circuit Judge.

Paul Graff appeals the decision of the Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences ¹ affirming the rejection of the claims of this reissue application. The Board held that grant of a reissue patent precludes the grant of a later reissue patent from a continuation reissue application. The Board also held that not only the reissue application but also broadening claims, as were sought by Mr. Graff, must be filed within two years of the original patent issue date. We reverse as to the first ground, and affirm as to the second. Thus the judgment of the Board is affirmed.

BACKGROUND

On October 23, 1984, United States Patent No. 4,477,928 (the '928 patent) was issued to inventor Paul Graff. On July 29, 1986 Mr. Graff filed reissue application Serial No. 06/891,365, declaring as the error requiring correction that the '928 patent was defective in that Figure 5 as issued did not match Figure 5 as filed, due to a draftsman's error. A corrected Figure 5 was submitted with the reissue application. No change in the claims was proposed.

The examiner conducted a new prior art search, in accordance with PTO practice for all reissue applications, even those based on draftsman's error. See 37 C.F.R. § 1.176 ("An original claim, if re-presented in the reissue application, is subject to reexamination, and the entire application will be examined in the same manner as original applications....") The examiner, by action dated September 2, 1987, rejected all of the claims on the ground of obviousness, citing a new reference. Although Mr. Graff had previously proposed no change in the claims, upon consideration of the new rejection he filed an amendment on February 2, 1988, leaving the scope of the original claims unchanged and adding several new claims that were, according to the amendment, broader in some respects and equivalent in others. With this amendment Mr. Graff filed a new declaration in a form appropriate to broadening reissue applications, averring that he had erroneously claimed "more or less" than he had a right to claim in the '928 patent. Mr. Graff also presented arguments directed to the patentability of all of the claims in light of the newly cited reference.

All of the original claims, one of which was replaced with a new claim of the same scope, were allowed on June 27, 1990. However, all of the broadened claims were rejected on the ground that Mr. Graff had not applied for a reissue patent enlarging the scope of the claims within the statutory two year period for filing broadening reissue applications.

Mr. Graff wished to appeal this rejection, for he deemed it to be contrary to the holding of In re Doll, 57 C.C.P.A. 822, 419 F.2d 925, 164 USPQ 218 (1970). However, he was concerned about the continuing delay, for he was involved in an infringement suit that had been stayed, the reissue application had already been pending for four years, and he was experiencing injury from infringement. Therefore, Mr. Graff acted to secure issuance of the reissue patent with the corrected drawing and the allowed claims, while he prosecuted the broadened claims in a continuation application. To this end he filed, on March 8, 1991, a continuation of his reissue application containing only the broadened claims, which he then cancelled from the first reissue application. The first reissue application duly issued as Reissue Patent No. 33,586 on May 14, 1991, with the corrected drawing and essentially the same claims as in the surrendered '928 patent.

The claims of the continuation reissue application were again rejected by the examiner, on the ground that the broadened claims were filed more than two years after issuance of the original '928 patent. Mr. Graff argued that it was sufficient that he had filed a non-broadening reissue application within the two year period, citing In re Doll. However, the Board distinguished Doll on its facts, and declined to follow it in this case. The Board also held that the continuation reissue application could not be granted because "35 U.S.C. § 251 does not authorize reissuance of the surrendered '928 patent through the present second reissue application." This appeal followed.

DISCUSSION

The reissue statute provides:

§ 251 Whenever any patent is, through error without any deceptive intention, 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 Commissioner 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 to reissue.

The Commissioner may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.

The provisions of the 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.

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.

35 U.S.C. § 251 (paragraph numbers added).

A

The Board held that 35 U.S.C. § 251 does not authorize reissuance of the surrendered '928 patent through Mr. Graff's second reissue application. However, § 251 does not bar multiple reissue patents in appropriate circumstances. Section 251 provides that the general rules for patent applications apply also to reissue applications, and § 251 expressly recognizes that there may be more than one reissue patent for distinct and separate parts of the thing...