In re Bostwick, Patent Appeal No. 4111.

• Decision Date: 10 April 1939
• Docket Number: Patent Appeal No. 4111.
• Parties: In re BOSTWICK.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

41 USPQ 279, 102 F.2d 886 (1939)

In re BOSTWICK.^*

Patent Appeal No. 4111.

Court of Customs and Patent Appeals.

April 10, 1939.

Bates, Golrick & Teare, of Cleveland, Ohio (Albert R. Teare and Walter F. Liesegang, both of Cleveland, Ohio, and Donald A. Gardiner, of Washington, D. C., of counsel), for appellant.

R. F. Whitehead, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel), for Commissioner of Patents.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT, and JACKSON, Associate Judges.

LENROOT, Associate Judge.

This is an appeal from a decision of the Board of Appeals of the United States Patent Office affirming a decision of the Primary Examiner rejecting, for the reason hereinafter stated, claims 10 to 14, inclusive, of appellant's application filed December 24, 1936, for a reissue of a patent issued to appellant on March 27, 1934, No. 1,952,904, application for which patent was filed on October 12, 1932.

Claim 10 is illustrative of the claims in issue and reads as follows: "10. In tire building apparatus, the combination of a pair of adjacent parallel rollers, a liner having its ends connected to the respective rollers so as to be wound, in alternation, upon each of them, means for driving one of said rollers to wrap the liner and a strip of material thereon, and means normally urging the other roller to rotation in a direction to rewind the liner thereon."

The subject matter of the invention is sufficiently set forth in the above-quoted claim.

The claims here involved were copied by appellant for purposes of interference from a patent to one Heston, No. 2,039,532, issued on May 5, 1936, upon an application filed December 7, 1933, the copied claims being numbered 1 to 5, inclusive, in the Heston patent.

It appears that said claims of the Heston patent were originally rejected upon appellant's said patent, but Heston filed an affidavit under rule 75 of the rules of the Patent Office, whereupon appellant's patent was withdrawn as a reference.

The examiner held that the appealed claims are not allowable in appellant's reissue application because they are broader than the claims of his patent and the reissue application was not filed within two years from the grant of the original patent, without any sufficient excuse for the delay.

The Board of Appeals did not specifically pass upon the question of whether the involved claims are broader than the claims of the original patent, but there was a general affirmance of the decision of the examiner, which included this ground of rejection. In re Wagenhorst, 64 F.2d 780, 20 C.C.P.A., Patents, 991.

The board did specifically make a finding which apparently constituted a new ground of rejection, viz., that there was no inadvertence in omitting the involved claims in appellant's original patent for the reason that in his original application appellant indicated that the structure embraced in the claims before us was undesirable.

No motion was made by appellant for reconsideration of said decision, or that the case be remanded to the Primary Examiner, so under rule 139 of the rules of the Patent Office this ground of rejection by the Board of Appeals is also before us.

Two questions are thus presented for decision:

1. Are the claims before us broader than the claims in appellant's original patent, making applicable the rule that, after the lapse of two years after the issue of a patent, a reissue which seeks to enlarge the claims of the original patent will not be granted unless special circumstances are shown to excuse the delay?

2. Does appellant's original application indicate that he did not intend to include the claims before us in his original patent?

The rule above stated is well established, and the authorities relating thereto were reviewed and approved by us in the case of In re Kaser, 64 F.2d 687, 20 C.C.P. A., Patents, 1035.

It is appellant's contention that the involved claims are not broader than the claims of his original patent, but are in fact more limited. Claim 1 of said original patent is illustrative and reads as follows: "1. In reeling apparatus for tacky strips, the combination of a pair of drums, a liner permanently connecting and wound in the same direction upon the two, and an equalizing connection between the drums, acting oppositely to the direction of winding of the liner and having yielding means for maintaining a tension on the liner."

The Primary Examiner in his statement upon appeal to the Board of Appeals held that the claims are broader than the claims of the original patent for the following reason:

"Each of the original claims 1 to 9 included a connection between the drums that acts to tension the line as follows:

* * * * * * *

"Thus in each of these claims a connection between two drums is claimed, whereas in the new claims 10 to 14 the tension member is claimed as `means' or `a spring' (Claim 13, line 7) in connection with a single roller, but not with two rollers or drums. * * *"

We are in agreement with the above-quoted view of the Primary Examiner, and it is clear to us that, in the respect above noted, the involved claims have been broadened. They were admittedly copied for the purpose of interference with the Heston patent, and only in their broadening in the respect above noted over the claims of appellant's original patent could there be an interference between appellant's reissue application and the Heston patent.

It is true that the involved claims contain limitations not found in the claims of the original patent, but the fact...