In re Smyser, Patent Appeal No. 4702.

• Decision Date: 21 May 1943
• Docket Number: Patent Appeal No. 4702.
• Citation: 57 USPQ 402,135 F.2d 747
• Parties: In re SMYSER.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

57 USPQ 402, 135 F.2d 747 (1943)

In re SMYSER.

Patent Appeal No. 4702.

Court of Customs and Patent Appeals.

May 21, 1943.

Charles S. Grindle, of Washington, D. C. (E. G. Carpenter, of St. Paul, Minn., J. T. Basseches, of New York City, and John J. Darby, of Washington, D. C., of counsel), for appellant.

W. W. Cochran, of Washington, D. C. (E. L. Reynolds, of Washington, D. C., of counsel), for the Commissioner of Patents.

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

HATFIELD, Associate Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the decision of the Primary Examiner rejecting all of the claims (Nos. 25 to 28, inclusive, 31 to 36, inclusive, 38, 41, 42, and 44 to 52, inclusive) in appellant's application for a patent for an alleged invention relating to an abrasive article, commonly known as sandpaper.¹

Appellant's involved application, filed November 3, 1932, is for a reissue of his patent, No. 1,788,600, issued January 13, 1931, on an application, No. 691,149, filed February 7, 1924, and is alleged to be a division of a reissue application, No. 532,674, filed April 24, 1931.

Counsel for appellant moved to dismiss the appeal as to claims 25, 26, 27, 31, 32, 36, 37, 38, 39, 43, 44, 45, 50, 51, and 52. The motion will be granted. That leaves for our consideration claims 28, 33, 34, 35, 41, 42, and 46 to 49, inclusive.

We quote claims 28 and 48, which are representative of the appealed claims.

"28. An article of the character described in the form of a sheet or web-carrying elongated particles of non-conducting material, having a supporting base of electrically insulating or poorly conducting material, said base having an adherent coating of conducting material, a coating of binder material over said conducting material, and a coating of said elongated non-conducting material deposited in uniform relationship over and adhesively united by said binder material to said supporting base."

"48. A new article of manufacture having abrasive particles positioned relative to one another by electric action, substantially all of the abrasive particles at the abrading surface having major and minor axes and being responsive to electric action and substantially all of said particles being positioned and supported in an adhesive with their major axes substantially perpendicular to the abrading surface."

It is agreed that the claims now before us were not rejected as unpatentable over the prior art, and that, therefore, the prior art of record need not be considered. All of such claims were rejected, however, on the ground that they define an invention different from that elected to be prosecuted in appellant's application, No. 691,149, which matured into his patent No. 1,788,600, and that appellant's failure to claim the invention defined by the involved claims in his original application was not due to inadvertence, accident, or mistake as provided in section 4916 of the Revised Statutes, U.S.C., title 35, section 64, 35 U.S.C.A. § 64, but, on the contrary, was the result of deliberate action by appellant in cancelling certain article claims during the prosecution of his original application because the Primary Examiner required division between those claims and the apparatus and process claims contained in that application.

The statute, so far as pertinent to the issue here, reads:

§ 4916. (U.S.C., title 35, § 64). "Whenever any patent is wholly or partly inoperative or invalid, by reason of a defective or insufficient specification, or by reason of the patentee claiming as his own invention or discovery more than he had a right to claim as new, if the error has arisen by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, the commissioner shall, on the surrender of such patent, and the payment of the duty required by law, cause a patent for the same invention, and in accordance with the corrected specification, to be reissued to the patentee or to his assigns or legal representatives, for the unexpired part of the term of the original patent. Such surrender shall take effect upon the issue of the reissued patent, but in so far as the claims of the original and reissued patents are identical, such surrender shall not affect any action then pending nor abate any cause of action then existing, and the reissued patent to the extent that its claims are identical with the original patent shall constitute a continuation thereof and have effect continuously from the date of the original patent. The commissioner may, in his discretion, cause several patents to be issued 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 letters patent. * * *"

It appears from the record that appellant's original application which matured into patent No. 1,788,600 contained claims to a process and an apparatus for making the article defined by the appealed claims. That application also contained six article claims, numbered 25 to 30, inclusive. Of those claims, claims 26, 27, and 28 contained the limitation that the abrasive material was electrostatically deposited or impacted on a sheet of fabric or the like. In response to a holding by the Primary Examiner that claims 26, 27, and 28 were objectionable because the article was defined by the method of manufacture, that is, that the abrasive material was electrostatically deposited or impacted upon the sheet of fabric, the term "electrostatically" was deleted from those claims by appellant. Thereupon, the Primary Examiner required division between the article claims — 25 to 30, inclusive — and the process and apparatus claims contained in appellant's application, the examiner stating that the cancellation of the term "electrostatically" indicated that that feature in claims 26, 27, and 28 did not affect the finished article which would be the same regardless of how the abrasive material was applied. All of those claims — 25 to 30, inclusive — were also rejected on the prior art. In response to that action of the Primary Examiner, appellant cancelled claims 25, 26, 27, and 28 and renumbered claims 29 and 30 as claims 25 and 26. Those claims were again rejected on the prior art. Whereupon, according to the brief of the Solicitor for the Patent Office and it is not denied by counsel for appellant, claims 25 and 26 were cancelled. Thereafter, appellant amended his application by inserting another article claim — numbered 29 — which read as follows:

"29. An article of manufacture comprising a fabric having intimately associated therewith a quantity of electrically conducting material, a quantity of binding material, and a quantity of abrasive material, the latter being held by binder."

Division was required by the Primary Examiner between that claim and the apparatus and process claims, on the ground that the article defined in claim 29 could be made by a process or processes other than that disclosed and claimed in that application. Thereupon, appellant cancelled claim 29, and his patent No. 1,788,600, issued, containing apparatus and process claims only.

In the brief of the Solicitor for the Patent Office it is stated that "* * * The basis of the final holding by the Primary Examiner, in which the appellant acquiesced, was that the article claimed in appellant's original application could be made by processes other than that disclosed by him and claimed in his original application and patent. Such acquiescence obviously amounted to an assent to the proposition that claims drawn to articles which could be made by processes other than that disclosed in the application could not properly be included therein. Having agreed to this proposition and received his patent without such claims, appellant cannot obtain, by reissue, claims of the type which he deliberately withdrew."

Counsel for appellant contend that the board erred in holding that appellant was estopped to claim the appealed claims here under consideration in a reissue application, because, it is stated in their brief, estoppel has no application where, as in the instant case, the claims presented in a reissue application contain limitations which patentably distinguish them from claims cancelled from the original application. In support of their position, ...